Demonstrating Use in Commerce for Trademark Registration and Enforcement

Under the Lanham Act, use in commerce to support an application for registration and to support maintenance of a registration is not just “any old use”. It’s a specific type of use defined in the Lanham Act, and if the trademark owner cannot demonstrate such use, it may not be able to claim rights in a mark, whether for purposes of registration or to establish common law rights. The Trademark Trial and Appeal Board (TTAB) has issued numerous opinions in opposition and cancellation proceedings and the federal courts have issued numerous opinions discussing the issue of proper use in commerce under the Lanham Act while dissecting whether the proponent of trademark rights has properly demonstrated use in commerce to support those rights. However, the issue of demonstrating proper use in commerce to support an applicant’s or registrant’s rights begins way before a dispute occurs. As we have learned from review of the case law, an applicant’s or registrant’s declaration of use and supporting specimens may go unchallenged at the registration and/or maintenance stages because on their face, they appear to be acceptable. But later, when the marks are enforced, the rights on which the marks are based may unravel as the specimens and statements supporting the marks are examined in more detail and it is determined that they are not sufficient and/or appropriate to meet the standards under the Lanham Act. Accordingly, the brand owner may be left with no rights at all in the mark.

Through a discussion of the Lanham Act’s provisions regarding “use in commerce”, the rules and guidance put forth by the USPTO to adhere to the Lanham Act’s definition of “use in commerce” and the case law interpreting what is and is not proper “use in commerce”, and use analogous to trademark use, our authoritative panel will provide trademark counsel with guidance for establishing proper use of a mark in commerce under the Lanham Act for purposes of securing registration, maintaining registration and/or establishing priority under Section 2(d), along with best practices to implement going forward.

Listen as our authoritative panel examines what "use in commerce" is under the Lanham Act and for trademark registration purposes. The panel will discuss proper or acceptable evidence of use in commerce and offer best practices for demonstrating use in commerce.

1. Use in commerce
   • Under the Lanham Act
   • In the rules put forth by the USPTO for purposes of securing trademark registration and maintaining trademark registration
   • Demonstrating proper and acceptable evidence of use in commerce, and to avoid abandonment, based on select case law from the TTAB and the federal courts
2. Analogous use to establish priority
3. Bona fide intent to use in commerce to support a trademark application under Section 1(b)
4. Best practices for demonstrating use in commerce

The panel will review these and other noteworthy issues:

• How can counsel improve the chances of the USPTO accepting a specimen of use?
• How can a rights holder establish priority in a mark before making use in commerce?
• How can a rights holder ensure that it is well positioned to defend a challenge about its priority date?
• Does an applicant really need to have a “bona fide” intention to use a mark in commerce before filing an intent-to-use application?