As I’ve written about elsewhere, the three requirements for trademark protection are use, distinctiveness, and non-functionality. The requirement of “use” seems easy enough, because “use” is a common word that everybody knows and understands, right?  These three simple letters are actually pretty complex when it comes to trademark law. I’ll explain the basics below, but keep in mind this stuff has a lot of nuances.  

In the United States, you don’t get a trademark just by saying you have one – you have to stake your claim in it through something called “use in commerce.”

This is true whether or not you register your trademark with your specific state or with the nationwide US Patent and Trademark Office. The legal rule on this states that:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

What does all of this legal terminology mean in plain English?

You have to sell something.

If you’re selling a product, the trademark has to be placed on those products, or the product’s packaging, while you’re selling and/or advertising it. If you’re providing services (as opposed to selling products), the trademark has to be displayed during the sale or advertising of your services. 

Use cannot be sporadic, occasional, or casual. If you’re staking a claim in a trademark, make sure that your use is consistent in all forms. You want to use the same colors, size, font, placement, etc. each time you place the trademark on something. If there’s ever a question about whether you’ve used the trademark in the appropriate way, this will help you prove that your “use” was done the right now.

On a related note, things like marketing, crowdfunding (i.e, Kickstarter campaigns) probably don’t meet the use requirement, though beta testing probably does.

The words “in commerce” mean that you’ve actually sold something. The trademark rules require that your goods have been sold or transported, or that your services have actually been rendered to others.

With sales, they must be real, legitimate sales where money is exchanged with someone outside of your business. It won’t fly if you’re just selling a “sham” product/service here and there, or shipping things within your company to your sales reps.

But, small companies, don’t get worried – if you’re a small business without a lot of sales, this is okay. The law requires your good faith, legitimate, bona fide efforts, not millions of dollars of sales.

You want to keep track of this kind of thing and document when and where you’re using the trademark under these definitions. If you decide to register your trademark, the application will ask for the first day (month, day and year) that you used your trademark in commerce.

For a federal trademark application through the US Patent and Trademark Office, you’ll also be required to prove your use through something called a “specimen,” which shows your trademark’s use in commerce.

From the USPTO Trademark Fact Sheet

Here’s some guidance from the US Patent and Trademark Office on what is considered an appropriate specimen:

Appropriate For Goods: Usually, a specimen for a mark used on goods shows the mark as it appears on the actual goods, or on labeling or packaging for the goods. For example, your specimen may be a tag or label displaying the mark, or a photograph showing the mark on the goods or its packaging. A website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable.

Inappropriate For Goods: Invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.

Appropriate For Services: A specimen for a mark used in connection with services must show the mark used in providing or advertising the services.  For example, your specimen may be a photograph of a business sign,  a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark.  The specimen must show or contain some reference to the services, that is, it is not just a display of the mark itself.

Inappropriate For Services: Printer’s proofs for advertisements or news articles about your services are not acceptable because they do not show your use of the mark.

State applications may have different rules – you should check the rules of your state if you go that route.

If you haven’t sold or shipped anything yet. All is not lost. You can file something called an “intent-to-use” application with the United States Patent and Trademark Office (“USPTO”). This will basically hold your place in line as of the date you file that application. The USPTO will go ahead and assess your application to make sure you meet the legal requirements at that time. Then, once you do starting using the trademark you can file a statement saying alerting the USPTO of that use, and your trademark will be registered at that time.

There you have it—who knew three little letters were so complicated? If you’ve dealt with the question of use, drop us a comment and let us know how you worked through it!

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