Satisfy the “Use in Commerce” Requirement with Your Webpage

That a mark has been “used in commerce” is one of the primary requirements that a mark must fulfill before becoming a registered trademark with the U.S. Patent and Trademark Office (USPTO). While there is a significantly developed body of law regarding traditional “use in commerce” with regards to brick-and-mortar shops and radio and television advertising, the same is not as true with regards to the internet. In any case, some useful guidelines have emerged in recent years from the Trademark Trial and Appeal Board (TTAB).

Regarding the sale of goods (as opposed to services, which have an easier requirement), a mark is considered to be “used in commerce” if “it is placed in any manner on the goods or their containers or the displays associated [with the products, or if this is not possible,] then on documents associated with goods or their sale….”

When submitting evidence to the USPTO to demonstrate “use in commerce” on a website, the specimen must:

(1) include a picture of the products;

(2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and

(3) contain the information necessary to order the products.

Remember that “mere advertising” of one’s product with the mark is typically insufficient, whereas “a display associated with the goods” is sufficient. Not only must the mark connect with the product in the minds of consumers, but the consumers must also be provided with enough information so that they can place an order.

In a 2007 case,  In re Valentine Inc., the TTAB considered the fact that a trademark applicant’s website, in addition to pictures of the goods, provided “an on-line catalog, technical information intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service [to place an order]”.

Taking these things into consideration when designing and building your website can help avoid a problem later down the line when you apply for your trademark, especially if you are strictly an online-based business. Make your trademark obvious on your page, with the goal of leaving an impression upon visitors of your mark as they click “add to shopping cart” or pick up the phone to order.

–   ck

4 thoughts on “Satisfy the “Use in Commerce” Requirement with Your Webpage

  1. I want to take note of this specific blog, “Satisfy the “Use in Commerce” Requirement with Your Webpage trademarkcopyrightlaw”
    on my very own webpage. Will you mind if I reallydo it?
    Thanks -Marty


  2. If an online social network internationally is not registered, but is in use, can that prevent someone in the US to register the same trademark in a different industry?


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