Do I Have to Use My Product or Trademark in Commerce First?
Yes. Before the United States Patent & Trademark Office (USPTO) grants a Registration, you must provide evidence of use of the Mark in commerce.
The Statutory Law
15 United States Code 1051 (U.S.C.) (a) (2) reads, “The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.”
15 U.S.C. 1127, in part, reads, “The word “commerce” means all commerce which may lawfully be regulated by Congress.”
Establishing Interstate or International Use
Only interstate or international commerce can be lawfully regulated by Congress. Thus, interstate or international use of your product is required to secure a federal Registration.
Your Louisville, Kentucky company, only sells gizmos (bearing your Trademark) to a Lexington Kentucky corporation. In this example, there is only intrastate commerce. Since Congress does not regulate intrastate commerce, your Trademark would not be a subject for a federal Registration.
On the other hand, if your Cincinnati Ohio company sells gizmos (bearing your Trademark) to corporations in Columbus, Ohio; Louisville, Kentucky; and Nashville, Tennessee, then you conduct interstate commerce. Since Congress regulates interstate commerce, your Trademark would eligible for a federal Registration.
Likewise, if your Lexington, Kentucky company sells your gizmos (bearing your Trademark) to retailers in Canada and Mexico, then you conduct international commerce. Congress regulates international commerce, so your Trademark would be eligible for federal Registration.
What is Acceptable Evidence of Use to Establish Interstate or International Use?
For either Trademarks or Service Marks, invoices and other business records showing sales across state lines or international borders are useful in establishing interstate and/or international commerce. Here are a few more examples of acceptable evidence of use for both Trademarks and Service marks:
Examples of Evidence for Trademarks:
- Photographs of the Trademark, when attached to the goods and/or the packaging containing the goods
- Photographs of displays of the goods, where the displays and the goods bear the Trademark
- Screen shots of websites for the sale of goods where the website and the goods bear the Trademark
- Screen shots of websites for the streaming or downloading of software products, where the website and the software goods bear the Trademark
- Copies of audio commercials advertising the goods bearing your Trademark
- Photographs of promotional giveaways advertising the goods bearing your Trademark
Examples of Evidentiary Specimens for Service Marks:
- Photographs associating the Service Mark with the services rendered
- Video and/or audio commercials associating the Service Mark with the services rendered
- Printed publications and brochures associating the Service Mark with the services rendered
- Letterhead and business cards associating the Service Mark with the services rendered
- Photographs of promotional giveaways associating the Service Mark with the services rendered
What Digital Formats Should I Use To Provide Evidence?
Do you plan to submit digital proof of use to the USPTO? Then you need to know that the office prefers PDF or .jpg samples. So, be sure to submit all digitally filed evidentiary specimens in one of these two formats.
What If I Need More Trademark Help or Legal Advice?
When you need help to secure, manage and/or enforce your Trademarks or Service Marks, contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies of all sizes.
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