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TRADEMARK QUESTIONS. How to "USE" a mark in commerce?

Los Altos, CA |

AT what point is a mark considred "USED" in commerce? How to keep evidence of this? What to do to get this status even before open for business?

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Attorney answers 7

Posted

"Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:
For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. You can apply for an "intent to use" first then follow up and file a trademark application once you are using it in commerce. Pictures of your label or logo in actual use or advertisements is usually sufficient to establish use in commerce.

The answers given are informational only and do not constitute legal advice. Please feel free to contact me if you want to obtain legal advice from me.

Bruce E. Burdick

Bruce E. Burdick

Posted

The specimen is good, but prudence and trial experience lead me to always insist on a dated shipping document clearly tied to the branded goods to indisputably prove date and character of use on goods, or a dated ad and dated invoice for branded services. That avoids going to court and having the other side making you look bad by attacking the dates of first use. If you have such proof that attack backfires to your benefit and the other side's detriment.

Posted

This is a very good question, and one that a lot of trademark owners do not readily understand. More specific statements are found in the 900 Section of the Trademark Manual of Examining Procedure, which is linked to below. The ordinary course of trade in your business will establish what the best route of using and providing evidence of that use. A lawyer could be of great assistance on this, because it needs to be specific to your business and industry. A lot of lawyers provide free consultations that can assist.

www.bayoaklaw.com. 510-208-5500. This answer does not create an attorney-client relationship. It is not legal advice, because it is only of a general nature. Please contact a lawyer qualified in your jurisdiction to discuss your situation in confidence, using your factual details. Avvo answers are only general legal responses. Item 9 of Avvo.com's Terms and Conditions are incorporated in this disclaimer as though it were printed here.

Mario Sergio Golab

Mario Sergio Golab

Posted

If the business has not yet open, there are ONLY TWO possibilities. 1. File an "Intend to Use" application or 2. Wait until the business starts operating and comply with the requirement you so ably stated to file an "In Use" application.

Posted

The response above is accurate. However, you can file an "intent-to-use" trademark application with the US Trademark Office before you begin use, and you will receive the date of filing as your priority date over third parties, so long as you do eventually use the mark in commerce and file the necessary proof with the Trademark Office. It is important to do a clearance search before filing, because you will not receive a response from the US Trademark Office for 3-4 months. If there is a preexisting mark with superior rights, you'll want to know before wasting money filing an application and gearing up you business.

Comments provided on this website are not intended as legal advise and do not create and attorney client relationship.

Asker

Posted

isn't filing an intent cheaper than a search?

Angela Small Booth

Angela Small Booth

Posted

Yes and no. Often clients have counsel perform an informal search which is not expensive depending on their fee structure often less than the cost of the application. A formal search with the company I use costs more-approximately $650 just for the search. The formal searches generate reports of hundreds of pages. Because businesses may have common law rights, it is insufficient to just search the Trademark Office records. Whether an informal search is sufficient depends on both the mark you have selected and the amount of risk you are willing to tolerate.

Bruce E. Burdick

Bruce E. Burdick

Posted

No, it is not cheaper. An informal search is very inexpensive. A comprehensive commercial search can be, as stated $650 (or more), but the online search engines are now giving pretty comparable results, if one knows which to search and how. An attorney can often do the search quicker, better and cheaper than the commercial services, which often give a huge amount of marginal information that is useless except for the biggest of trademark launches where millions of dollars are on the line.

Posted

First, you cannot get "used" in commerce status for your trademark before you open for business---at most you can file a trademark application on an "intent to use" basis. Second, use requires a lot more than just printing up a few business cards or some letterhead. Use requires inclusion of the trademark in connection with the marketing and sale of products on a commercial basis in the marketplace. Likewise, use of a trademark for services requires consistent, continuous ongoing use in the marketing and provision of such services. Use of the trademark a few times, or sporadically, is probably not enough. Why does this rule exist---trademarks are primarily designed to avoid consumer confusion---there is no real danger of consumer confusion until a company actually uses the trademark in a meaningful and substantial manner in its business. And we do not want to allow companies to inventory trademarks without using them---that is unfair to others who might make actual use of the same trademarks.

Bruce E. Burdick

Bruce E. Burdick

Posted

I think this glosses over "constructive use" and individual use by the prospective business owner prior to opening the business. Attorney Ross expertly knows all that and would be one of the most vocal in saying that if getting use is an issue for you, that is a flag telling you to see a trademark attorney, who can help you strategize how to do that most efficiently for legal purposes. Certainly as a minimum you need to have a good faith intention to use the mark on at least one product or service in the ordinary course of business before you can begin to establish trademark/servicemark protection.

Posted

The best way to establish use in commerce is to sell goods or services under the mark. Trademark law is viewed in the mind of the consumer; the stronger the association in the mind of the consumer between the mark and you as producer of the product or service, the stronger the mark. However, there is no way a consumer could associate the mark to you if you are not out there selling a good or service under it. Thus, trademark law requires actual "use in commerce" before issuing a trademark.

That said, you may obtain rights in the mark via an Intent to Use application as my colleages have noted.

Please do not take my response to your question as offering specific legal advice. To offer specific legal advice, I would need to know a lot more information regarding your specific legal issue than you have provided. Additionally, I have taken the time to respond out of my own desire to be a good "legal" citizen and help good folks like yourself with legal related issues; however, my response is not intended to create an attorney-client relationship.

Asker

Posted

what if two companies have been using the same trademark for quite some time but one of them develops a stronger association over time?

Bruce E. Burdick

Bruce E. Burdick

Posted

That is the stuff of trademark litigation. Google "Big O vs. Goodyear" for an interesting war story on that, the reading of which will likely answer your two companies questions. Goodyear learned an expensive lesson on what not to do.

Posted

"Commerce" means all commerce that the U.S. Congress may lawfully regulate; this includes commerce between the states of the U.S. or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, not simply a use made of reserving the right to a mark. Generally, acceptable "use" for goods is:
the mark appearing on the goods, on the container for the goods, or on displays associated with the goods, and the goods must be sold or transported in commerce. Generally, for services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. This may be in the form of an advertisement on a website or even on fliers advertising the services.

Posted

Prudence, prosecution experiences and trial experiences lead me to always insist on a dated shipping document clearly tied to the branded goods to indisputably prove date and character of use on goods, or a dated ad and dated invoice for branded services. That avoids going to court and having the other side making you look bad by attacking the dates of first use. If you have such proof that attack backfires to your benefit and the other side's detriment. Likewise, if the examiner raises any question about the bona fides of the use, it is nice to be able to slap a copy of a dated shipping document on them, as it often makes them cave on other issues rather than get slapped again. I have used that to good effect in many, many otherwise close cases.

Before being open for business a Federal trademark application is the best way, as it can give you immediate nationwide priority and up to 3 years to start actual use, provided you know how to work the system. If the delay will be longer than about six months you need an attorney so as not to screw this up and lose your rights.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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