Service Mark: What Counts As 'Use In Commerce'?

The definition of use in commerce is a fundamental requirement for trademark registration in the United States. It ensures that trademarks are actively associated with goods or services offered to consumers across state lines. The Trademark Trial and Appeal Board (TTAB) has ruled on cases involving the interpretation of use in commerce, such as Blast Blow Dry Bar LLC v. Blown Away LLC and Ultrasun AG's petition to cancel the SP registration for the ULTRA SUN mark. To establish priority, a party can rely on trademark registration, trademark filing date, trade name use, trademark or service mark use, or another type of use that meets the legal definition. Offering services via the internet may constitute use in commerce as it makes the services available to a wider audience. However, merely offering goods or services for sale is typically insufficient for registering a trademark or service mark.

Explore related products

Understanding Trademark Law (Understanding Series)

$55 $55

Trademark Law: An Open-Access Casebook (Version 12) (2025): Volume 1

$21.7

USPTO Trademark Law and Practice: [Connected eBook] (Aspen Coursebook Series)

$150 $150

Patent, Copyright & Trademark: An Intellectual Property Desk Reference

$28.45 $49.99

Trademarks and Unfair Competition: Law and Policy (Aspen Casebook Series)

$242.7 $359

Trademark: Legal Care for Your Business & Product Name

$30.42 $39.99

The mark must be used in the sale, advertising, or rendering of services

For a service mark to be considered "used in commerce", it must be used in the sale, advertising, or rendering of services. This means that the mark must be used in the course of legitimate commercial activity, and not just as a token or de minimis use to reserve a right to the mark. The use must be genuine and have an impact on interstate commerce, which includes trade between states or between the US and other countries. Purely local use within a single state does not qualify, unless it directly affects or impacts interstate, territorial, or foreign commerce. For example, a local travel agency that books interstate and/or international travel would qualify as interstate commerce under the Lanham Act.

To establish priority and demonstrate that a mark is being used in commerce, a party can rely on their trademark registration, trademark filing date, trade name use, trademark or service mark use, use equivalent to service mark or trademark mark use, or demonstrate another use that rises to this level. Offering services via the internet has been held to constitute use in commerce because the services are made available to consumers on a national or international level. However, merely offering goods or services for sale or advertising them is not sufficient for registration of a trademark or service mark unless the goods or services have actually been sold or rendered in commerce.

When filing a trademark application based on "use in commerce", applicants must provide evidence demonstrating such use. This typically includes specimens, such as actual examples or screenshots showing the mark as used in commerce, and dates of first use. The United States Patent and Trademark Office (USPTO) may allow businesses distributing promotional gifts, free services, or free samples to register their trademark, but any giveaways will usually need to be connected to selling the good or service in the future. Additionally, the good or service must exist when it is sold, and the mark must be placed on the goods, on the containers of the goods, displays associated with the goods, or on the tags or labels. If the nature of the goods makes the placement of the mark impracticable, then it can be placed on documents associated with the goods or its sale.

The services must be rendered in commerce and across state lines

When it comes to service marks, the services must be rendered in commerce and across state lines. This means that the services are offered and provided to customers in exchange for payment, and this commercial activity occurs across multiple states or between the United States and another country.

For a trademark to be considered "used in commerce" for services, the mark must be used or displayed in the sale, advertising, or rendering of the services, and the services must be genuinely rendered in commerce. This means that simply offering services or advertising them is not sufficient for establishing trademark use in commerce; the services must actually be provided to customers.

The requirement for services to be "rendered in commerce" means that there must be actual commercial activity involving the services under the trademark. This typically involves the exchange of money for services, indicating legitimate commercial transactions. Sham sales or transactions created solely to establish trademark rights are not considered legitimate commercial activity and will not satisfy the requirement of "use in commerce."

To demonstrate "use in commerce," applicants must provide evidence, including specimens or examples of the mark as used in commerce. For services, this could include advertisements, brochures, or website screenshots displaying the mark in connection with the offered services. Additionally, applicants must specify the dates of first use of the mark, both the initial use and the first use in commerce.

It's important to note that the commerce involved must be of a type that can be regulated by Congress. This includes interstate commerce (between multiple U.S. states), territorial commerce (between the U.S. and its territories), or foreign commerce (between the U.S. and a foreign country). Purely local use within a single state does not qualify as "use in commerce" unless it directly impacts or affects interstate, territorial, or foreign commerce.

The use must be lawful and genuine, not just token use

When it comes to service marks, the use must be genuine and not just token use. This means that there must be actual sales of goods or services under the mark to real customers, with legitimate commercial activity. Advertising alone does not constitute use in commerce, as there must be an ability to perform a sale. Sham sales or transactions are scrutinised and dismissed as they aim to unjustly reserve trademark rights without engaging in real commercial activities.

The United States Patent and Trademark Office (USPTO) requires evidence of actual use, such as specimens and dates of first use, to be submitted with a trademark application. Specimens may include photographs of products with the mark on the packaging or labels, or screenshots of websites displaying the mark in connection with the services offered. The date of first use in commerce is the date when branded goods were first sold, transported, or services were rendered and the mark was used in the sale or advertising of those services.

The use must be in the "ordinary course of trade", which can vary from industry to industry. For example, a local nail salon is unlikely to use its service mark in interstate commerce, but a local travel agency booking international travel would. The use must also be lawful, as without lawful use, trademark priority cannot be established. An example is CreAgri, Inc. v. USANA Health Sciences, Inc., where the plaintiff failed to comply with the Food, Drug, and Cosmetic Act's labelling requirements and could not establish priority rights.

The use must also have an impact on interstate commerce, which includes trade between US states or between the US and other countries. Purely local use within a single state does not qualify, unless it directly affects or impacts interstate, territorial, or foreign commerce. For instance, a clothing brand that sells products across state lines or online to customers in different states.

Explore related products

Trademark Law: An Open-Access Casebook (Version 12) (2025): Volume 2

$11.22

Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets

$199.09 $259.95

Patents, Copyrights and Trademarks For Dummies

$24.98 $29.99

Intellectual Property In the Digital Age [Edition 2024]: A Practical Guide on Patents, Trademarks, Copyrights, and Protecting Confidential Information [AI Insight Bonus]

$49.97

Intellectual Property: A Quickstudy Laminated Law Reference Guide

$7.95

Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets

$113.14 $259.95

The mark must be placed on goods, containers, displays, or associated documents

When it comes to trademark law, the use of a mark in commerce is deemed to have occurred when it is placed on goods, containers of goods, displays associated with goods, or on tags and labels. If the nature of the goods makes affixing the mark impracticable, then it must appear on documents associated with the goods or their sale. This could include photographs of the product with the mark visible on the packaging or labels, or for services, advertisements, brochures, or website screenshots displaying the mark in connection with the offered services.

The placement of the mark on goods or associated documents is a crucial step in establishing trademark rights and registration. It indicates that the mark is being used in a genuine and legitimate manner, and not merely as a "token" use or a sham sale to reserve a right in the mark. The mark must be affixed before the sale occurs and cannot be swapped out with another mark after the purchase but before the delivery.

In addition to placement, the goods must be sold or transported in commerce, which can include interstate commerce, territorial commerce, or commerce between the US and foreign countries. Intrastate commerce, on its own, does not provide a basis for federal registration. However, if the intrastate commercial activity affects a type of commerce that Congress can regulate, it can still satisfy the Trademark Act.

It is important to note that the goods or services bearing the mark must exist at the time of sale. In-house experimentation, evaluation, or preparation do not constitute bona fide shipments to satisfy the public use requirement. The mark must be used in the ordinary course of trade, and its use must have an impact on interstate commerce.

Offering services online or through the internet can also constitute use in commerce, as it makes the services available to a wider audience, including consumers in other states or countries. However, merely advertising the goods or services is not sufficient for establishing use in commerce. Actual sales or transportation of goods or the rendering of services must occur for trademark registration.

The trademark owner must demonstrate priority by showing earlier use in commerce

When two parties dispute the priority of a trademark, the trademark owner must demonstrate that they used the mark in commerce before the other party. This is a prerequisite for registration on the Principal Register. The United States Patent and Trademark Office (USPTO) and courts look for actual sales of goods or services under the mark to real customers, where the transaction is indicative of legitimate commercial activity.

The date of first use in commerce is the date when the branded goods were first sold or transported, or the services were first rendered and the mark was first used in the sale or advertising of the services. The trademark will not be considered used in commerce until the good physically exists or the service is actually available. The mark must already be present on the goods or in association with the offered services when they are sold or transported to the public. The use must be genuine and not merely to reserve a right to the mark. This means there must be actual commercial activity involving the goods or services under the trademark.

To establish priority, a party can rely on their trademark registration, trademark filing date, trade name use, trademark or service mark use, use equivalent to service mark or trademark mark use, or demonstrate another use that rises to this level. The opposer in the Blast Blow Dry Bar LLC v. Blown Away LLC case pleaded rights based on use and use tantamount to service mark use. However, the Board found that the opposer's websites were not operational at the time of purchase and services were not being rendered. The opposer also attempted to establish an earlier first use date by informing the Board of the distribution of business cards and other marketing materials, but they could not prove how many potential customers were reached by this promotional effort or that it had a significant impact on the public.

Offering services via the Internet has been held to constitute use in commerce because the services are made available to consumers on a national or international level. However, it is important to note that use in commerce must be lawful use. Without lawful use, a party cannot establish trademark priority.

Frequently asked questions