Proactive Trademark Practices for Companies – Part 7 Trademark Use

Trademark “Use”

The requisite “use” required to support and maintain a federal trademark registration is the legitimate sale or transportation of a good or provision of a service in interstate commerce as part of a continuing program in the ordinary course of trade.

The traditional view has been that sale or transportation in interstate commerce requires a sale or transportation across a state line. The modern view is the “affect on commerce” rule. While a purely intrastate use is insufficient to establish the federal jurisdictional basis for an application to register, if an intrastate sale directly affects a type of commerce which may lawfully be regulated by Congress, this may be sufficient “use in commerce” to support the federal application. Thus, even local interstate sales or the provision of services may be made in commerce for trademark registration purposes if the sales or services, for example, are made or provided to interstate travelers or involve the purchase of parts, materials or products from out of state.

A “use” in commerce should be both bona fide and part of a continuing program. A sporadic, casual, sham or transitory use is insufficient. A sham transaction exists if the initial shipments are not followed in reasonable time by ongoing commercial activity. For example, nominal or token sales to relatives and personal friends do not constitute a bona fide commercial use of a trademark. An objective, good faith test will be applied to establish the genuineness of the applicant’s intent. When an applicant files an “in use” application or files an “intent-to-use” application and later alleges use in good faith reliance on a borderline transaction, no fraud should be found. Accordingly, an applicant must be prepared to document the nature, character, and extent of the use, and how that use compares with the use of other marks for similar products and services to show the ordinary course of trade in the applicable field.

When beginning to use a trademark, both before and after filing a registration application, a first concern is to ensure proper trademark use on all labeling and in literature and advertising to preserve your rights. You should include your mark, identified with the proper “TM” symbol (or ® symbol after registration), everywhere the trademark is displayed or printed.

When using the trademark with other text, always print the mark in uppercase, italics or in some typeset that sets it off from the text in which it appears. Where appropriate or needed, you may state in a note that the mark is a trademark of your company. Furthermore, you should endeavor to use your mark at least some of the time as an adjective to modify the appropriate generic term (for example, “Fat Bass™ fishing lures”). This statement may initially be awkward for promotional purposes, but it ensures that the mark is not used to describe the good or service and prevents it from becoming generic.