Trademark Use Basics

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, for the trademark GuitarMagiciansä for guitar instruction, rather than stating that someone is a “Certified GuitarMagician,” it should be stated that the person is a “Certified GuitarMagiciansä Guitar Instructor.” 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.

While the foregoing remarks apply to marketing and advertising materials, your second concern should be documenting use of your mark in activities that qualify it for Federal registration. Federal registration is intended to protect marks that are in use in interstate commerce. This being said, providing only intrastate sales or services is not a bar to obtaining Federal registration provided that you can prove that your uses of the mark substantially affect interstate commerce. Accordingly, proof of use that affects interstate commerce requires that the use be bona fide and part of a continuing program. Sporadic, casual, or transitory uses are not sufficient to establish a continuing commercial activity. Also, for a use to be commercially bona fide, it is not sufficient merely to sell a certain number of items to out-of-state relatives or friends. Rather, the use must point to establishment of real customers, whether those customers are physically out-of-state or visitors to your local business.

Accordingly, documenting all uses of the mark that involve sales and provision of services is essential data required to establish an effect on interstate commerce. For a time, as you begin providing services and using your mark, you should track all sales and services, noting the location of the person to whom the sale is being made or the service provided. For Internet traffic to a site through which relevant services are being provided, if possible, track the general origin of the visitors (through IP address logging, etc). If your goods and services will be provided only within a state, seek ways to document sales to customers visiting from out-of-state (asking for ZIP codes at time of sale, etc.). The foregoing suggestions will help to strengthen the extent of the use of your mark and support its use in interstate commerce should anyone challenge your right to own that mark. You should make a regular record of the earliest sales and retain copies of invoices along with copies of payment, or other evidence of providing services that may be available. Initial sales, and therefore dates of first use, are often questioned when they are not followed up by bona fide commercial sales and when there is no proof of ever having received any payment.

These actions will help you properly use your mark and ensure that you get the credit you deserve for each use of your mark as you establish your company’s identity. Remember, protecting your trademark advances your company from just one in the “pack” to leadership in your industry.