In order to be eligible for trademark protection, the brand identifying mark must be used in interstate commerce, meaning, it has to be used to mark goods or services that are actually being marketed and sold across state lines. Even though that sounds simple, the “use in intercommerce” requirement is one of the most complex and confusing, and also one of the most common mistakes people make when applying for trademark registration.
The trademark office defines use in commerce as use on goods that are engaged in “bona fide sales.” This means they actually want to see real sales, and multiple of them. One sale likely isn’t enough proof that this mark is truly identifying a brand. This means that marketing, websites, email addresses, and business cards usually don’t qualify on their own as “use in commerce” unless you can also show that goods are actually being sold or services are being rendered.
The requirement that the sales be across state lines is because trademark law is federal law, and the federal government only has control over commerce that happens between states and not within states themselves. If a mark meets all other requirements for trademark except it’s only being marketed and sold within one state, each state also has its own trademark registration process that can provide some protection if you’re not able to register federally. The good news is that in our global society, almost all goods and services are considered interstate commerce because they reach people online and/or many customers come from other states and buy your goods or services.
If you know you want to use a mark in the future but aren’t going to be using it in commerce yet, you can file what’s called an “Intent to Use” application with the USPTO. This type of application notifies the trademark office that you intend to use it in the future, and you can go through much of the registration process in advance to make sure you will successfully register the mark later. If approved, once you’re using it in commerce you let the trademark office know and provide proof, and then your mark will be registered. Stay tuned for a future installment of this trademark series for more information about registering a mark.
Many people get their registration applications rejected because they can’t show true use in commerce yet, or the evidence they attempted to provide aren’t good enough to prove it. This factor is an important reason to have an experienced attorney help you with your trademark if you choose to register or want to otherwise protect your mark.