This is Part I in a series on establishing use in commerce in the US for federal trademark purposes. Part II will discuss how to prove use in commerce and what kinds of specimens qualify. Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.
Clients frequently ask for guidance about how to establish use in commerce to support their applications to the U.S. Patent & Trademark Office (USPTO) for registration of their trademarks and service marks. This post will address establishing use in commerce, generally, including why it is necessary to evidence such use and how much use would be sufficient.
How Do You Prove Use in Commerce?
In the U.S., trademark rights are created and maintained based on the use of a particular mark in commerce in connection with specific goods and serv ices. Trademarks act as “source identifiers” to allow consumers to connect certain good and services with certain providers/manufacturers/sellers. While registration of one’s trademarks is not required in the U.S. in order to obtain rights, it is generally recommended if the goods or services will be traveling across state lines or if the trademark holder has intentions of expanding its market beyond a particular local jurisdiction.
Ultimately, registrations must be supported by evidence of use of the applicable mark in commerce in connection with specific goods and services** – demonstrated through the submission to the USPTO of “specimens” during the application process. 15 U.S.C. § 1051(a); 37 C.F.R. § 2.34(a)(1).
**Note: the rules are somewhat different when filing an application based on a foreign registration or application pursuant to Sections 44 or 66. Applications filed by foreign applicants supported by these foreign registrations will be covered in more detail in a separate blog post. For the purposes of this post, we will assume that we’re only addressing applications filed by U.S. applicants based on Section 1(a) (use) or Section 1(b) (intent to use).
It is not enough to simply want to reserve a mark or protect it against use by others. Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (adding the requirement that a bona fide use of a mark in the ordinary course of trade was required, and not “made merely to reserve a right in a mark”). Instead, applicants eventually have to demonstrate that they use their marks in connection with these specific goods and services.
Why Must a Mark be “Used in Commerce”?
It is a common misconception that registration of a trademark can reserve a catchy phrase, fancy logo, single word, slogan or any other trademark and keep others from using it – even when there is no use or bona fide intent to use this mark in connection with goods or services in trade. For example, shortly after President Trump tweeted the now famous mistake “COVFEFE” on Twitter, nearly 40 applications for registration of that word (sometimes with other words or characters, and other times alone) were filed in the USPTO. To find these applications, conduct a Basic User Search for “covfefe” at http://tmsearch.uspto.gov. Not a single one of these applications was supported by evidence of actual use. As of today, all but 4 of them have been abandoned (still not demonstrating any use in commerce) and the three oldest are only limping along:
- Mark: #COVFEFE, Ser. No. 87/469,115 (currently on ex parte appeal to the TTAB, seeking to overcome the USPTO’s refusal to register and denial of the request for reconsideration);
- Mark: COVFEFE CARRY ON VIGILANTLY FIGHTING EVIL FOR EVER, Ser. No. 87/471,677 (currently suspended pending resolution of the following prior filed applications for variations of the COVFEFE marks: “Application Serial Nos. 87471601, 87471560, 87471171, 87471159, 87470968, 87470872, 87469898, 87469814, 87469789, 87469576, 87469331, 87469298, 87469292, 87469117, and 87469115″ (see Sept. 21, 2017 Suspension Letter). You can explore the status of each of these by visiting http://tsdr.uspto.gov, and typing in the applicable application number);
- Mark: COVFEFE COFFEE, Ser. No. 87/469,292 (final refusal to register was issued by the USPTO on Oct. 24, 2017 – the Office action contains numerous references to articles written about the “Covfefe” phenomenon); and
- Mark: STABLE GENIUS COVFEFE, Ser. No. 87/746,117 (newly filed application not yet assigned to an Examiner).
This can be an expensive exercise – the USPTO’s filing fees are not insignificant, and if one does what some of the COVFEFE applicants did (i.e., file in multiple classes – see, e.g., Ser. No. 87/472,391 for a three-class application incurring $875 in filing fees), the filing fees can add up even if you don’t hire a lawyer, and these application fees are non-refundable.
A common argument raised by the USPTO in its refusals to register these marks has been that these marks are merely references to informational matter incapable of identifying the source of the goods or services to be offered in connection with the mark. See USPTO Examination Guide 2-17, “Merely Informational Matter,” July 2017 (explaining why simple political slogans or common phrases used in normal conversation are incapable of functioning as trademarks). Accordingly, it isn’t about “preserving the words” or “keeping others from adopting them” that creates the rights – it’s the act of using these words or combinations of words as marks (brands) in connection with specific goods or services and allowing purchasers and potential purchasers to associate these marks with a particular company/individual who provides these goods and services.
How Much Use is “Enough Use”?
While “token use” of a mark in commerce intended simply to reserve rights in a mark (and not connecting a mark to a good or service) will not be sufficient for purposes of achieving or maintaining a registration (see TMEP § 901.02), at least one recent case held that a single sale to a purchaser across state lines was sufficient to demonstrate use in commerce for these purposes. See Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 992-93 (Fed. Cir. 2016) (holding that an out-of-state purchaser’s payment by check showing the customer’s out-of-state address for two hats bearing the mark was sufficient evidence to support the Lanham Act’s requirement of “use in commerce” for purposes of registration of that mark with the USPTO).
Under U.S. law, trademark rights accrue based on use in commerce – which must be demonstrated through examples showing how the mark is actually used. Foreign applicants can rely on foreign registrations to initially obtain U.S. trademark rights, but must eventually demonstrate use of the mark in commerce in order to preserve the registration at each of the relevant maintenance deadlines. While federal registration of these rights can provide valuable presumptions and aid efforts to preclude others from adopting the same or confusingly similar marks in commerce in connection with the same or confusingly similar goods or services, trademark rights are strongest when connected to actual use in commerce.