Use In Commerce, Trademarks, & Service Marks

In order to explain the term "Use in Commerce," it's likely a good idea to briefly outline how the federal government is able to regulate trademarks.

In the United States, we have a so-called "federal" system, in which the federal government has only those limited powers that are explicitly set forth in, or enabled by, the U.S. Constitution. Because the U.S. Constitution does not contain a "trademark" clause that would allow the federal government to expressly regulate trademarks, the federal government's power to regulate trademarks is made possible by the "Commerce Clause" or "Interstate Commerce Clause," which allows the federal government to "[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes." As a result, a trademark must first be used in a manner as set forth in the Commerce Clause, most commonly this involves commerce "among the various states".

But when has a mark been used in interstate commerce in our modern times? Well, it seems that there may be a different standard depending upon wether a mark is a trademark, used in connection with the sale of goods, or a service mark, used in connection with the provision of services.

The Lanham Act, commonly referred to as the Trademark Act defines the term "use in commerce":

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.

In short, this means that if a mark owner seeks the benefits and protections provided by the Trademark Act for a particular mark, it must: (1) in the case of a trademark, be associated with goods that are actually sold or transported in interstate or international commerce or (2) in the case of a service mark, be associated with services that are actually rendered in interstate or international commerce.

This brief overview of some important considerations associated with trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.

Steve Cook is an attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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