Use-Based Federal Trademark Application

Putting aside foreign bases for filing a Federal trademark application, a Federal trademark application has essentially two bases in which to file.   The first basis is that the trademark is “used in commerce.”  The second basis is that an applicant has an “intent-to-use” a mark in commerce.  The principle difference between these two filing bases is whether use of the mark has occurred on all the goods/services identified in the trademark application.  If you have already used your mark in commerce with all the goods/services in your application, you may file under the “use in commerce” basis.

According to 15 U.S.C. § 1127, a mark is “used in commerce” when:

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

As such, any application for a trademark “used in commerce” must include a statement that the mark is in use in commerce, verifying the same with an affidavit or declaration.  The type of “commerce” encompassed in this definition are interstate, territorial, and between the United States and a foreign country.

Use of a mark in commerce is also generally established by providing (1) the date of first use of said mark anywhere and (2) the date of first use of the mark in commerce, as well as submitting a “specimen,” or example, showing how the applied-for mark is actually used.

If you believe you qualify for filing a use-based Federal trademark application, or a Florida trademark application, we at Johnson Dalal would be happy to answer any questions not answered above and/or to assist you with performing any trademark-related filings.  Please contact us by telephone at (888) 201-8001 or (954) 507-4500, or by email at Info@JohnsonDalal.com.  We look forward to being YOUR intellectual property attorneys.