Actual Use Trademark RequirementsWhen applying for trademark registration, certain requirements must be met to show the trademark is actually being used in commerce. The following is a list of general guidelines that courts may consider when determining whether the sale or transport of goods meet the “actual use in commerce” requirement:

  • Avoid Internal Shipments: Simply transferring products from one office location to another may technically be a transport of goods or services; however, such transport is not sufficient to be considered a “use in commerce”.
  • Comply with Federal Statutes: Use in commerce means all commerce that is lawful. This could be federal laws pertaining to food labels, drugs, or cosmetics. If you are not complying with federal laws, your trademark application can be refused for such failure.
  • Make all Sales Bona Fide: Do not attempt to go around the requirements of bona fide use of a trademark in commerce in order to hold your rights to a trademark. All sales containing the trademarked product should be to a retailer, wholesaler, or customer in an arms-length business transaction that would occur in the ordinary course of trade.
  • Avoid having a Non-Owner Use the Trademark First: Having another entity or individual use the proposed trademark before the actual owner could result in the other entity owning the rights to the trademark.
  • The Trademark Owner Should Make the Initial Shipments: Once the new mark is selected, the intended trademark owner should make the initial shipments that occur in the ordinary course of trade as soon as possible. This allows the earliest possible priority date for the trademark application.