- If you've seen any of my previous videos about trademarks,
you've likely heard me say,
that you have to be using a trademark in commerce
before it can be registered with the USPTO.
But what exactly does that mean
to use a trademark in commerce?
I'm gonna explain to you
what it means to use the trademark in commerce,
how to determine
your date of first use of a trademark,
what can happen
if you get that date of first use wrong,
and how use in commerce
can affect your trademark rights.
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Hi, I'm Aiden Durham,
business and branding attorney
with 180 Law Co in Colorado,
and I've helped hundreds of businesses
secure and protect their trademarks.
The number one most important thing to remember
when it comes to trademarks,
is something you've likely heard me say before.
A trademark isn't a trademark
until it's a trademark.
When you're applying for a trademark registration,
you have to give
the date of first use in commerce.
That's the day your trademark became a trademark.
So let's talk about what that means
and what it means to use a trademark in commerce.
And make sure you watch till the end,
because I'm gonna tell you
why not knowing your first date of use in commerce
could even make you guilty of fraud.
I've talked in previous videos like this one,
about how it's possible
to file a trademark application
on a 1b intent-to-use basis,
which means you're not yet
using the trademark in commerce,
but you have a bonafide intent to do so.
But the trademark won't be registered
until you've started using the trademark in commerce,
and you provide proof of that use to the USPTO,
because it's not a trademark
until you start using it as a trademark,
because a trademark isn't a trademark,
until it's a trademark.
You also need to let the USPTO know
the specific date of first use
of the trademark in commerce.
So how do you know
if you're using a trademark in commerce
and when you started using a trademark in commerce?
I've had a lot of conversations with clients
where we'll be talking about this,
and I'll ask when they started
using the trademark in commerce,
because I need that date of first use
for their trademark application.
Quite often, I'll get a response back like,
"Well, this was the date that I formed my LLC"
or, "This was the date
that I purchased the domain name
for my business or for my trademark."
No, no, no, no,
neither of those things
constitute use of a trademark in commerce.
Simply forming an LLC or purchasing a domain name
doesn't make a trademark.
The official legal definition of commerce
is all commerce,
which may be lawfully regulated by Congress.
Oh, Rocky! Rocky just shut my light off.
Rocky, come on buddy.
Oh pal, oh pal. (sighs deeply)
All right, we're back.
Hopefully Rocky is not going
to lay on my power strip again.
Where were we? Anyway,
okay, commerce means commerce
that can be lawfully regulated by Congress,
and use in commerce,
means the bonafide use of a mark
in the ordinary course of trade,
and not made merely to reserve a right in the mark.
There's a whole big drawn out definition
of what use means
with respect to goods and services
and exactly what that looks like,
but it can pretty much boil down to this,
use means you are actively marketing and selling
your goods or your services to consumers,
and that you're using the trademark
in connection with those activities,
whether the trademark
is a fixed on a product,
or product packaging, or a product display,
or if it's used on a website,
or other materials to market
and sell your services.
It's not enough that you've just filed for the LLC
or purchase the domain name.
You have to be actually engaging in the business
and using your trademark
in the ordinary course of those business operations,
and actually selling marketing,
promoting your products or your services.
So that's what it means
to use a trademark in commerce.
But, let's go back to this in commerce part.
Again, commerce in this sense
means a type of commerce that can be regulated
by the United States Congress.
This means that it needs
to either be interstate commerce
like between two states,
territorial commerce, like between the United States
and one of its territories like Puerto Rico or Guam,
or commerce between the United States
and a foreign country or foreign jurisdiction.
To pretty grossly generalize,
'cause there are not exceptions,
but there are different ways
that this actually applied,
but as a gross generalization,
it means that you need
to sell your product or service
to at least one person
from a different state or territory, or country,
from where your business is located
or where it operates.
Is this all starting to make a little bit more sense?
I sure hope so.
Hit that thumbs up and like this video,
or comment, if the things are starting
to come together for you.
It's not always easy to say exactly what use is,
but we know from case history and legal precedent,
that there are a few warning signs or red flags
that a certain kind of use
may not be enough to really constitute use
in commerce of a trademark.
Some of those factors, or red flags, or signals,
are number one,
single or very infrequent shipping of goods
that are normally sold in larger quantities
in your industry.
Second factor, sales to friends or family.
Of course, that doesn't mean
that you can't sell your products or services
to friends or family,
but kind of some of these like nominal sales
to a family member,
those by themselves may not be good enough
to constitute use in commerce of a trademark.
A lack of concern
for whether the purchasing public
ever has an opportunity
to buy the product.
So if okay, I'm selling it
to a lot of my friends and family,
but the general public, general consumers
never encounter this,
never have an opportunity
to buy the product themselves,
the owner of the mark
doesn't engage in any kind of marketing
or promotional activities
to sell the goods or services.
The first use of the mark
was followed by an abnormally long hiatus
from using the mark,
or labels used on a product were handmade,
or otherwise not of a normal commercial character.
Now all these things,
just 'cause this might be true in your instance,
these things don't necessarily mean
that it's not use of a trademark in commerce,
these are just some factors
that might be like a red flag to the USPTO,
or in a situation like this
if you've only sold one product to a family member
and that one product had a handmade label on it,
and it all kind of ends up
looking like sham use of the trademark.
So those are just a few things
that can kind of help tip you off
of whether this is actual legit bonafide use
of a trademark in commerce.
Again, it really just boils down
to using the trademark like a normal business would,
in the normal course of doing business.
Consumers are able to see the trademark
in the marketplace
when they're encountering your goods or your services.
And again, it's so important to know
what use in commerce means,
because we have to give
that date of first use in commerce
on the trademark application,
and we have to be accurate
with that date of first use.
If your trademark is ever challenged,
or re-examined by the USPTO,
and you're unable to demonstrate and prove
that that date of first use that you indicated is valid,
your entire trademark registration
could be canceled.
You could even get in trouble for fraud
if you don't put
the accurate and correct date of first use
on the application.
That's right, fraud.
When you submit this information
about the date of first use,
you're making all kinds of promises
and declarations saying that
this information that I'm giving you is truthful,
and valid, and accurate,
and you are promising to the USPTO
about the truthfulness and the accuracy
of that date of first use.
So if it later turns out to be wrong,
it could be pretty bad,
and it could be considered fraud.
So you really can't take this stuff lightly.
If you're ready to start
the trademark application process for yourself,
I can teach you the exact process
that I use with my clients,
and the precise steps
that you can start taking right now,
that will have you ready
to hit that submit button on your trademark application
in just seven days.
Head to this link,
or check the link in the description
to learn more about BRANDISH,
and start DIYing your trademark application today.
Securing your trademark registration
is vital to the growth and success of your business,
and your business and your future self will thank you
if you take extra care, to make sure that
that trademark application and registration
is valid, and accurate, and as strong as possible,
including with regard to that date of first use.
If you got value out of this video,
hit that little thumbs up button
to give me a like,
and share this video
so we can spread the good word
of the importance of trademark registration.
And\ be sure to check out some of my other videos
for more legal tips and tricks for your business.
Thank you so much for watching.
I'm Aiden Durham,
and I will see you next time.
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