Home // Education Center // What qualifies as acceptable Use in U.S. Commerce?

Education Center

06Feb2018
Authors: Bharati Bakshani, Sebastian Lovera Riso, Dennis S. Prahl, Matthew D. Asbell | Practices: Trademarks | Tags: Allegation of Use, Statement of Use, Use, Use in U.S. Commerce

What qualifies as acceptable Use in U.S. Commerce?

The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”. What qualifies as acceptable Use in Commerce is explained in the sections below:

+ Where to Use

The mark must be used in commerce that may be lawfully regulated by U.S. Congress. Typically, such use is either (a) between the United States and another country or (b) in a U.S. territory (e.g. Puerto Rico) or (c) interstate. Commerce merely within one state (intrastate) or purely outside of the United States is not sufficient, unless it directly affects commerce in other states.

Example 1:A restaurant having only customers in its home state is not acting “in commerce.” However, advertising the restaurant under the mark outside of the state, including via the internet, and providing the services to out-of-state customers may qualify as use in U.S. commerce.
Example 2:Use of a mark advertising goods or services within the United States may not qualify as “use in commerce”, if the goods or services are available outside the United States only. Even an offer to ship into the United States may not by itself suffice. However, actual shipment into the United States may suffice.

+ Amount of Use

More than token use: The use of the mark must be in good faith in the ordinary course of trade, and must not be a “token use” made merely to reserve a right in the mark.
Amount of use: Commercial transactions that are too sporadic, casual, or nominal, may not qualify as sales “in the ordinary course of trade.” Factors to consider are: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry.
- Example 1:An industry that sells expensive or seasonal products may make infrequent sales that are still sufficient for purposes of claiming use in U.S. Commerce.
- Example 2:A pharmaceutical company that ships a drug bearing its trademark to clinical investigators during the Federal approval process is considered to have used the mark in U.S. Commerce.

+ Use Specimens

Use Specimens: Use specimens show the manner in which the mark is used (i.e. how it is seen by the consumers). Thus, the specimen must show the mark the way it is actually used in commerce. At least one specimen is required for each class.

A proper use specimen for goods (Classes 1 – 34) must show the mark affixed on the outside of the goods or packaging (typically a label or tag attached to the actual goods) or on a point of sale display associated with the goods and the goods must be sold or transported in commerce.
A proper use specimen for services (Classes 35 – 45) must show the mark as actually used in the sale or advertising of the services recited in the application or in the course of providing the services.

Consumers need to view a mark as a source indicator (ie, brand). Specimens where the mark is buried in prose or otherwise displayed in a way that would not suggest the function as a source indicator (eg., as mere ornamentation) are rarely if ever sufficient.

Goods

Services

Acceptable

On the goods
On labels /tags attached to the goods
On packaging, bags, boxes containing the goods
Prominently on a user manual
On a point of sale display (eg., an in-store display where the goods are available for purchase)
Printed or online catalogue only if it shows an image of the goods and including a means (eg., an online shopping cart or a telephone number) and invitation to place an order (eg, “Call now”); An online catalogue should show the URL and date last accessed.

On an advertisement
On a brochure
On a website (provided the URL and date of last access is shown)
On letterhead or business cards
On invoices

All of the above only if they specifically reference the service and in doing so, create an association between the mark and service

Unacceptable

The mark by itself
A tag or label not affixed to the actual goods
Packaging in which the goods are not contained
On a printer’s proof, mock-up, or artist’s rendering
On an invoice
On an advertisements or brochure
On a display where the goods are not actually available for purchase (eg., images at trade shows)
An online catalogue that does not include the URL and date of last access

The mark by itself
A website that does not include the URL and date of last access
Any of the acceptable examples set forth above, if they lack a reference to the service or an association between the mark and the service

Examples of acceptable and unacceptable use specimens for goods and services follow in the sections below.

Further information about acceptable and unacceptable use specimens is also available on the USPTO website at www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal.

+ Examples of Acceptable Use Specimens for Goods

Mark shown on the goods
Mark shown on tags/labels
Mark shown on bags/boxes/packaging
Mark on a point of sale (POS) display
Mark shown in a printed catalog with a means and invitation to place an order
Mark shown in an online catalog or store with a means and invitation to place an order