Greetings. I’m trademark attorney Josh Gerben and I would like to talk about what does “use in commerce” means as it relates to a trademark application. In any trademark application process, the U.S. government asks a very important question, “Are the goods or services that the trademark represents being used in commerce?”
If you answer yes, and you are not meeting the legal requirements of use in commerce, you have just created a loophole by which any subsequent registration that you achieve could be cancelled at any time, because an incorrect or fraudulent statement was made in the application.
So let’s talk about what “use in commerce” means. It means that your goods or services that are identified in the application are available for sale, or are being offered. If you’re offering an informational-based website, clearly there are not any sales. It’s just that it’s out there and being offered, and being consumed by individuals or people that are not family and friends.
Most of the time, this has to cross state lines. So it can’t just be your next door neighbor. It has to be someone in a different state. There is something called the Interstate Commerce Clause that gives Congress the ability to regulate interstate commerce, and that’s how we get federal trademarks. So it’s just important that the commerce cross state lines.
So the reason this is so important is because a lot of people think that registering a domain name, registering a company name, or just putting up a splash page (a coming soon thing on your website) is enough to meet the use in commerce requirement, and it is not. Again, this is so important because if you do say you’re using the trademark in commerce, but you are not, then you have made a fraudulent statement in your application and it can be cancelled.
Any registration you get can be cancelled. You can get the certificate – it can be taken away. One of the reasons I find that clients like to say “yes”, they’re using the trademark in commerce is because it avoids a filing at the end of the process. If you file the trademark application and say that you are only intending to use the trademark, then what happens is, once the government reviews your application, they will come back, and require that you now prove that you are using the trademark in commerce.
That filing, if you’re working with my firm, costs a flat legal fee of $250 to make, and $100 per class government filing fee. So it adds some fees on the back end of the process. The reason the government allows you to submit the trademark before you begin using the goods or services is because you should have the ability to reserve the name.
I hope this helps clarify some of the process. If you have any other questions, please feel free to give me a call.