A prerequisite for federal registration of your trademark is showing that your mark is being used “in commerce”, as Section 901 of the Trademark Manual of Examining Procedure (TMEP) lays out.
Essentially this means that you need to use your logo, slogan, or other source identifier in the course of authentic, "bona fide" business. We'll go further into what qualifies as bona fide business a bit later.
Use In Commerce for Physical Goods vs Services
Physical Goods - The mark should appear on labels applied to the goods, containers for the goods, or on the goods themselves. The goods should be available for purchase (i.e. in a store, online, by mail or phone, or for a business to business product available to other businesses).
Documentation On Your Trademark Application
A photo of your physical goods with your mark on them.
Photos of sales receipts showing sales of said goods.
Services - The mark should appear in the location where the services are being advertised. For example, if you have a website, your signifier should be on the same page where your services are being described. A newspaper ad, catalog, or other advertising material suffices as well. The services should be actively available for purchase.Documentation On Your Trademark Application
A screenshot of your website or photo of other advertising showing your services described near your trademark.
“Bona Fide Use” In Commerce vs “Token Use”
The Trademark Manual of Examining Procedure (TMEP) specifies that use in commerce must be “bona fide” and not “token use”. An example of token use would be selling something to a friend or family member for the purposes of getting a registered trademark for it. In other words, the use in commerce must be an authentic, bona fide use in the normal course of business.
The Mark Used In Commerce Should Exactly Match The Mark On Your Application
You might be surprised how many trademark applications get rejected because the Applicant’s mark used in commerce does not exactly match the mark on the trademark application. Make sure they match exactly: the spelling, whether a word is singular or plural, punctuation, design elements -- everything.
What If I Haven’t Used My Trademark In Commerce Yet?
If you haven’t used your trademark yet but are planning to, you may submit an Intent To Use trademark application. The date of filing an Intent To Use application becomes the priority date on record of your bona fide intention to use the mark in commerce, which protects against later users of your mark or another confusingly similar mark.
Once an Intent To Use trademark application is allowed--after being examined and the expiration of a 30-day opposition period--you have 6 months to provide proof of use of the mark in commerce. If you still haven’t used your mark at that point, the time to provide proof of use in commerce may be extended for additional time with extension fees, up to three years from allowance. Throughout the pendency of an Intent To Use application, you maintain priority over later users of the mark or another confusingly similar mark as of the filing date of the application. However, if you miss a deadline or don’t use the mark in commerce within the three-year time period and the trademark application abandons, you’ll risk someone else filing to register your trademark or another similar trademark.
READY TO FILE YOUR TRADEMARK?
Our firm has filed thousands in our 30-plus years in practice. Call (913) 248-4477 today for a consultation.