Use in Commerce

The United States is a first-to-use country, meaning the right to register a trademark belongs to the person who first used the mark in commerce, regardless of whether or not an application to register the trademark was filed. In addition, unregistered (depending on the length of usage) or common law trademarks enjoy the legal rights (to a limited extent) to claim a trademark despite subsequently filed and registered trademarks.

Accordingly, "use in commerce" is a fundamental requirement for common law trademarks and trademark registrations in the United States. A showing of "use in commerce" signifies that the mark is actively used to sell or transport goods or services across state lines or in international commerce. Importantly, this use must be bona fide, indicating genuine commercial use rather than an action performed solely to obtain common law rights or a trademark registration.

Unlike the United States, countries like China, Japan, Germany, and the European Union are first-to-file trademark countries. This means that trademark rights belong to the business whose trademark application has the earliest filing date. The filing date is important in these countries, not when the trademark was first used in commerce.

It is important to note that most countries in the world are first-to-file countries and, therefore, the right to register a trademark lies with the first to file a trademark application for that mark, regardless of who used it first.

Demonstrating "Use in Commerce"

For Goods

To demonstrate" "use in commerce" for tangible products, applicants can:

• Provide Specimens: Show the mark on the goods or their packaging, such as labels, tags, or containers.

• Show Clear Photographs: Submit photographs of the product with the visible mark or of the mark as it appears in marketing materials.

• Evidence of Sales: Present documentation of sales, like invoices or receipts, that show transactions of goods associated with the mark.

For Services

For services," "use in commerce" can be demonstrated by:

• Advertising Materials: Provide examples of advertising and marketing materials (brochures, flyers, websites) that display the mark associated with the services offered.

• Photos of Signage or Displays: Submit photos of signage or displays that use the mark while providing services, such as at a business location or service-related event.

• Service-Related Documents: Show documents (invoices, contracts) that evidence the rendering of services under the mark.

What is a Statement of Use

A Statement of Use (SOU) is required after an "intent-to-use" based trademark application has been approved for registration. This document certifies the trademark's use in commerce and allows the trademark application to be registered. 

A SOU must include the following:

• Specimens: Relevant examples showing the mark's commercial use.

• First Use Dates: The dates when the mark was first used in any capacity and when it was first used in commerce.

In the SOU, providing clear, legible specimens that conclusively demonstrate the mark's commercial use is crucial. The goods or services listed should accurately reflect the mark's actual commercial usage.

How TCP Law Can Help

Demonstrating use in commerce is vital to securing a trademark registration. It demands meticulous planning and attention to detail to ensure the evidence convincingly shows the mark's commercial use.

A trademark attorney at TCP Law can help you avoid common trademark application pitfalls to effectively strengthen your trademark application.

For assistance with demonstrating use in commerce or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.