How to Prove “Use in Commerce” and Avoid Office Actions

         When applying to register your trademark, the United States Patent and Trademark Office will ask on your application, “Are the goods or services that the trademark represents being used in commerce?” This question is more important than it seems because the answer will determine steps later on in your trademark application process, and incorrect or fraudulent statements regarding this can create major issues to your trademark registration.

What Does “Use in Commerce”?

So what does “use in commerce” even mean? This phrase means that your goods and/or services listed on your application are actually being offered or sold while you are applying for the trademark. It is essentially saying that you have used your mark on all goods and services you offer. Even if your business is strictly informational, and no sales are occurring, you can still fall under “use in commerce” because you are still publicly offering a product for consumers in association with your mark.

However, do not be fooled into thinking registering your company name or domain name is enough to qualify as “use in commerce”. Not even putting your company name or slogan on a website is enough if you are not actively offering or selling a good or service. It is even important that your trademark is visible from all points of your website. This way your trademark is included next to anything and everything you are offering to the public.

Even more technically speaking, to prove use in commerce in your trademark application, your proposed mark must appear at every point in which you are selling goods/services.

The harsh reality of misunderstanding “use in commerce” is the possibility that you could make a fraudulent statement on your application. This could result in your application being cancelled or your registration being revoked, and you will very likely receive an office action. Office actions occur when an examining attorney from the United States Patent and Trademark Office flags an issue in your trademark application which after two could result in denial of your trademark.

Common mistakes

Make sure that your mark appears everywhere on your website in conjunction with your goods and services-particularly if you are trying to register a slogan. Your slogan cannot appear as part of a paragraph or sentence-it must be a stand-alone phrase. For example, when registering the mark for my slogan for Fairway Stables, the slogan is clearly designated as a stand-alone phrase, both on the home page, and in the shop:

However, if the term “The Business of Horsemanship” appeared as a part of a larger sentence, the requisite “use in commerce” proof would not be sufficient.

What is the Difference between “Use in Commerce” and “Intent to Use” in Commerce?

Many prefer to file under “use in commerce” because there are no additional filing steps at the end of your registration trademark. If you are filing a trademark but have not yet begun offering or selling goods or services in association with your mark, then you must file under “Intent to Use” in commerce. Under this filing, there is an additional filing step at the end of your application process. Once your trademark is approved, the USPTO will require proof that you have begun using the trademark in commerce. This can add time and fees which is why many try to avoid this by attempting to file under “use in commerce” even if that is not technically true.

Nothing would feel worse than receiving your trademark registration certificate only to have it taken away because you misunderstood a term in your application, like “use in commerce”. Hiring a trademark attorney can help you to avoid filing your trademark application incorrectly or fraudulently under “use in commerce”. This will ensure a smooth application process and help save you time and money to get your trademark registered!

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