Trademark: What Does "Use In Commerce" Really Mean?

When, in The Sound of Music, Captain Von Trapp was giving Elsa the boot, Elsa said wanly, "and somewhere out there is a girl who I think will never be a nun..."

Well here's a mark that I think will never enjoy the protections of Federal trademark registration.

Yes, the application for registration was opposed by [the famous] P. Diddy.

And although there are plenty of good reasons why P. Diddy shoulda/woulda won the opposition based on likelihood of confusion, the reason this application crashed and burned was because the applicant never actually used the mark in commerce.

Worse, in its application the applicant said it HAD actually used the mark in commerce. (Oops, that's fraud.)

Here's what many business owners don't fully appreciate, and what tripped up the iDiddy applicant:

• Purchasing a domain for your mark is not "use in commerce."
• Hiring someone to design a logo for your mark is not "use in commerce."
• Ordering inventory is not "use in commerce."
• Shipping inventory to prepare for selling the goods is not "use in commerce."

What is "use in commerce?" This is paraphrasing the law, but essentially:

• Using the mark on goods or their containers, tags, labels or directly-associated displays; and
• Selling or transporting those goods (with the mark) in the ordinary course of trade, in commerce that can be regulated by Congress (think: across state lines or national borders).

Preparing to do that doesn't count. You need actual use in commerce.

Copyright 2011 Elizabeth T Russell. Blog content is not legal advice.