USPTO Requirement: Use in Commerce
In addition to providing a valid specimen, the USPTO requires that the trademark be “used in commerce.”
This might seem obvious, but it is actually quite specific in meaning. It means that the cloud-based software must not only be available for users to use, but must have regular, real customers. If only your friends and family are beta-testing the service, it is not likely “used in commerce.”
Further, at least one of those users must be from across state lines, as the USPTO requires “interstate commerce” as a part of the use requirements.
This does not mean that you need paying customers using your cloud-based service – many services are free and/or ad-supported. However, having a friend or family member sign up for the service and logging-in for the sole purpose of meeting this requirement is not allowed (and is considered “sham use.”) Any trademark registration obtained with “sham use” as the only use before registration, will be subject to cancellation.
Confused about the commercial use requirement? Talk to one of our experienced trademark attorneys today.
Contact Our Attorneys
What is good evidence of “use in commerce”?
Invoices, sales receipts, user activity, and other information can help determine whether you meet the “use” requirement. None of that information will need to be submitted to the U.S. government.
However, you will be required to sign a sworn statement that your services meet these requirements. If they do not, then a third-party may be able to cancel the resulting trademark registration, which would result in the loss of valuable federal trademark rights, such as nationwide priority, a presumption of ownership, and a presumption of validity.
All of these benefits mean that enforcement is easier, and your trademark rights are stronger.
When in doubt, always contact your attorney (or find an experienced attorney that you trust to give you good advice). Use issues are some of the most common issues that applicants face and can render a trademark registration essentially useless. By providing specimens and sworn statements that meet the USPTO requirements, you are setting yourself up for success and eliminating potential issues in the future.