Once you have decided upon a trademark and had an attorney run clearance searches, you may apply to register the trademark under one of two filing bases. You may either file an “in use” application to the United States Patent and Trademark Office (“USPTO”), which certifies that you have already used the mark in commerce, or an “intent to use” application, which although you haven’t used the mark yet in commerce, reserves the trademark on the register because you will use it at a later date. Eventually, you will have to file additional documentation with the USPTO asserting a date of first use of trademark.
But what qualifies as “in-use”?
Generally, to register an “in-use” trademark, you have to meet two requirements:
(1) that you made a “bona fide” use of the trademark; and
(2) that your first “bona fide” use was in interstate commerce (or, if you are a foreign applicant without a foreign trademark registration, in international commerce with the United States).
What is a “bona fide” use of a trademark:
This standard broadly means that you have genuinely sold or intend to sell your product continually. Even if your first use is promotional, you must have a genuine intent to then continue to offer for sale and sell your product for it to qualify for registration.
This standard is industry specific. What qualifies for one company or individual may likely be different than other companies. If you product is very large and expensive, then it is very likely that more sporadic and infrequent sales would count. Conversely, if your product is small, easily transportable and inexpensive, then you would likely have to make more frequent sales to the public.
Some examples of what would qualify as a bona fide use in commerce are: (1) selling your product or rendering your services across state lines; (2) shipping across state lines with instructions to test the product in the marketplace or to try to sell it; or (3) creating and disseminating offers of your services across state lines.
Some examples of what would likely not qualify as a “bona fide” use in commerce are: (1) “sales” to your relatives, friends and loved ones (which typically means giving away your product for free or at a negligible price); (2) using handmade labels that are “not of a normal, commercial character” (a showing that the applicant is not using the trademark in a serious commercial endeavor); (3) not genuinely offering your product or service to the public and showing a lack of concern for whether the public has the ability to purchase your products or services; or (4) not engaging in any promotional activities for your products or services.
Again, the overarching principle is that an applicant for a trademark must use the mark in interstate (or international) commerce genuinely. Once you have met the first-use in commerce requirements, then you will have a specific date to use when applying for registration of your trademark.
Moisan Legal P.C. is a boutique business law firm based in NYC catering to entrepreneurs, creatives and innovators.