A web site displays a mark that the web site owner is looking to register for trademark protection. The web site is still under development, but does contain information about the products and/or services that the site offers, and also a phone number to contact for additional info or to sign up as a service provider for the site. Would this constitute "use in commerce" for trademark application purposes or would an "intent to use" application be required?
3 Answers from Attorneys
Good websites are continually under construction or being modified. The question here is whether the mark has been used in commerce. I would think that if the site is available for download by the general public, and goods or services would actually be provided in response to a query generated by the website, then the mark has been used in commerce. You could perhaps strengthen this analysis by submitting the website, in its current form, to some search engines for indexing.
It would make a difference as to whether the mark applies to goods or services.
In general, a mark is not considered to be used in commerce in connection with goods until it is used on labelling of goods shipped in interstate or foreign commerce, or on a product display that's directly related to a sale, such as a menu posted above the counter at a fast food restaurant.
If the goods can be purchased by clicking a button on the site, then there is an argument by analogy to the "menu" case that the mark is in use in connection with the sale of the goods. A question to be resolved would be whether the mere placing of the site on the Internet puts the mark into Interstate commerce or whether it would be necessary to have a purchase by a customer from another State to show use of the mark in connection with Interstate commerce.
In general, a mark is considered to be used in commerce in connection with services if it is used on advertising brochures for those services that are directed into another State. It seems to me to be a reasonable analogy that a Web Site accessible worldwide places the equivalent of an
advertising brochure in Interstate and foreign commerce.
CAUTION: These thoughts do not constitute legal advice. One should obtain legal advice from one's own attorney, to whom one confidentialy discloses all pertinent circumstances.
My friend Gerry Elman (we used to converse on the subject of Winbook laptops) has given you the same advice I would, that if the site includes purchasing information and ordering capability it is sufficiently affixed to the goods at their point of sale to probably be considered to be used. If your goods are services, as it sounds like they may be, then ads and brochures are the normal way you "use" the mark in commerce. Your question suggests to me that you already know that filing based on "use" would save the expense and trouble of having to do a later amendment to allege use or statement of use in order to obtain the registration.