Section 45 of the Trademark Act defines "use in commerce" as a bona fide use of a trademark in the ordinary course of trade. If the mark is used with goods it will be deemed to be used in commerce when the mark is placed on the goods, on the containers of the goods, displays associated with the goods, or on the tags or labels, and if the nature of the goods makes the placement of the mark impracticable, then on documents associated with the goods or its sale. In addition, the goods must be sold or transported in commerce.
Keep in mind that commerce must be of a type that can be regulated by Congress. This means it must be interstate commerce, territorial commerce (meaning trade between the U.S. and a territory of the U.S. such as Guam, Puerto Rico, American Samoa, or the United States Virgin Islands), or commerce between the U.S. and a foreign country. Intrastate commerce will not provide a basis for federal registration. However, if commerce in one state affects a type of commerce that Congress can regulate, this would satisfy the Trademark Act. An example of this would be restaurant or hotel services. The rationale is that customers come across state lines in response to advertising for the services or a franchisee or licensee could be located in more than one state and use the trademark in more than one state.
Regarding services, there must be use of the trademark in connection with the sale or advertising of the services and the services are rendered in commerce. Offering services via the Internet has been held to constitute use in commerce because the services are made available to consumers on a national or international level. An applicant is not required to specify the type of commerce in which the trademark is used in its application.
Another important point is that use in commerce must be lawful use. Without lawful use a party cannot establish trademark priority. See CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 81 U.S.P.Q.2d 1592 (9th Cir. 2007), where the plaintiff was not able to establish priority rights because he failed to comply with labeling requirements of the Food, Drug, and Cosmetic Act. See also In re Midwest Tennis & Track Co., 29 U.S.P.Q.2d 1386, 1993 WL 562977 (TTAB 1993).
Moreover, use in commerce will be interpreted with flexibility to account for different industries' practices which may include less traditional uses such as infrequent sales of large or expensive items, test market sales, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval. If a third party is looking to attack a party's use of the mark, often it will be alleged that the use is "token" use, not genuine trademark use, or that the use was de minimis and non commercial in nature. It is clear that the meaning of "use in the ordinary course of trade" will vary from one industry to another.
The date of first use in commerce is the date when the branded goods were first sold or transported or the services were first rendered and the mark was first used in the sale or advertising of the services. Once a trademark applicant submits the date of first use any amendment of the date must be supported by an affidavit or declaration under 37 C.F.R. §2.20. If the trademark applicant filed based on use in commerce, the applicant can amend the date to a later date than originally claimed, but the date must be before the application filing date. If the first date of use is not before the trademark application filing date and the application is based on use, the trademark applicant may amend the basis to §1(b) changing the basis to a bona fide intent-to-use.
If the trademark applicant filed based on an intent-to-use and wants to change the date identified in its Amendment to Allege Use and that date is later than the filing date of the Amendment to Allege Use, the applicant must withdraw the Amendment to Allege Use before the application is approved for publication. If you need assistance determining the appropriate first date of use for your trademark application, kindly contact our office to schedule a courtesy consultation with one of our trademark attorneys.