Trademarks are an essential asset to any company, as they provide legal protection for business names, logos, and other identifiers. However, not all business identifiers are eligible for federal trademark registration, and among the requirements for a valid trademark is that the owner must make bona fide use of the trademark in commerce.
What is Bona Fide Use in Commerce?
Federal trademark law defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” As a result, the trademark owner must show actual use of the mark, not token or sham use of it.
What are the Requirements for Using a Trademark in Commerce?
The requirements for using a trademark in commerce varies depending on whether the mark covers goods (e.g., a drink brand) or services (e.g., a restaurant name).
For goods:
- the mark must be displayed on the goods, packaging for the goods, or associated displays, and
- the goods must be sold or transported in the ordinary course of trade, unless impracticable.
For services:
- the mark is employed during the promotion or sale of said services, and
- the services themselves must be provided during commercial activity.
What are Meaningful Sales?
In addition to using the mark in the sale and advertising of goods and/or services, the trademark owner must also show meaningful sales. While there is no specific quantity that constitutes meaningful sales, token or sham sales are not sufficient to meet the “bona fide use in commerce” requirement.
Examples of token or sham sales include providing services for little or no money, selling only to friends and family, or selling items that are all returned. Even if such transactions are bona fide, sporadic transactions do not meet the requirement that the mark be used “in the ordinary course of trade.”
If there is a good faith effort to establish a trade, a small number of sales and free promotional offerings are acceptable. Proper documentation is key and trademark owners should be prepared to show marketing and other efforts that are consistent with their industry.
What Does “Use in Commerce” Mean?
A trademark must be “used in commerce,” which under federal law means commerce regulated by Congress. This includes using your trademark in the transporting or selling of merchandise out of state or by providing services to customers who live out of state.
Must a Trademark Applicant Disclose the Date of First Use?
An applicant looking to federally register their trademark with the United States Patent and Trademark Office (USPTO) must provide the date the mark was first used anywhere on or in connection with the goods and/or services in the trademark application.
In addition, the applicant must include the date the mark was first used in commerce on or in connection with the goods and/or services in the application or allegation of use. This is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by Congress, and such use was bona fide and in the ordinary course of trade.
A trademark applicant must provide these the month, day, and year for these two dates, even if they are the same.
Conclusion
It is important for anyone looking to protect their trademarks to understand the law and seek legal assistance to ensure that their marks are valid and being used correctly. This will help avoid liability or the loss of rights. Contact the team at Romano Law for more information.
