Trademark Law: The “Use in Commerce” Requirement

(promotional poster for "The Blob," Paramount Pictures, 1958)

(promotional poster for “The Blob,” Paramount Pictures, 1958)

You’ve just come up with “Sonic Protoplasm” or some other great name for your band. A trademark search turns up no confusingly similar mark that is already being used by someone else. Accordingly, you set up a web site and start advertising the services you offer under that name. You then find an online trademark service that keeps costs low by dealing in volume. The firm says it has processed thousands of trademark applications so you figure it must be good.

Everything goes according to plan, and a year later two pieces of good news arrive in your mail: a trademark registration certificate from the USPTO and a notice that your band has qualified to participate in a “battle of the bands” concert.

You arrive at the forum on the day of the concert, and you can hear the crowd going wild inside for the band that is currently onstage. You ask an audience member which band is performing, and he answers, “Sonic Protoplasm, man!” When it’s your band’s turn to perform, you are booed off the stage for trying to trade on the success of the “real” Sonic Protoplasm. Worse, when you return home, you are served with petitions to cancel your registration and to permanently enjoin you from using that name.

Eventually, you find yourself in the federal circuit court of appeals, losing your case. You’re told the problem is that you failed to satisfy the “use in commerce” requirement. Federal trademark registration only protects marks that are “used in commerce.” 15 U.S.C. § 1051(a)(1).

It is true that under the Lanham Act, a service mark is considered to be “used in commerce” when it is displayed in the sale or advertising of services. Creating a web site to showcase and advertise the services you offer, and using the new name on the site, is one way to satisfy this requirement.

But that is only the first part of the “use in commerce” requirement. In addition to actually using the name, you must also actually render the services so advertised. 15 U.S.C. § 1127. If you have not actually started rendering the advertised service by the time you file your trademark application, the registration that is issued to you is not valid. It is subject to cancellation at any time, and it will not necessarily protect you against a competitor’s claim of infringement.

There is one exception to this rule: You may file a trademark application on the basis of an intent to use the mark in the future, rather than actual use. If you file this kind of application, then you have six months from the time you apply (plus any extensions you request and are granted) to start using the mark. If you do not file the requisite statement of use and specimens within that time, then federal trademark protection is lost.

These rules formed the basis for the recent federal circuit court of appeals decision in Couture v. Playdom, Inc. (No. 2014-1480, March 2, 2015.) David Couture had filed an application to register the mark PLAYDOM for entertainment and educational services. To demonstrate use in commerce, he submitted a screen shot of his web site advertising the services. He did not actually begin providing services, however, until later. In the meantime, Playdom, Inc. filed an application for the same mark. Playdom, Inc. successfully petitioned to cancel Couture’s registration of the mark because Couture had not satisfied both prongs of the “use in commerce” requirement.

Couture argued that he should have been permitted to amend his original application from one based on use to one based on intent to use. A petition to change the basis for a trademark registration application, however, must be filed before the issuance of the registration. TMEP § 806.03(j). He had not done that.

The trademark registration process may seem simple, but there are many traps for the unwary. In the immortal words of Sgt. Phil Esterhaus, “Be careful out there.”

(Note: “Be careful out there” is a protected trademark for workmen’s compensation claim services — USPTO ser. no. 77498935 — but not for blog articles.)