The Lanham Act is the federal law controlling trademarks. Section 1051 requires an individual uses the trademark in commerce before they apply to register the mark. But what exactly does the phrase “used in commerce” mean?
Luckily, section 1127 of the Lanham Act provides some assistance. It states the word “commerce” means all commerce Congress can lawfully regulate. However, what commerce Congress can and cannot regulate is not always easy to determine. Courts and lawmakers have debated the issue throughout the history of the United States. As a general rule of thumb, though, Congress can regulate any activity that has a substantial effect on interstate commerce. Famous Supreme Court cases such as United States v. Darby and Wickard v. Filburn helped establish this principal.
Section 1127, also, defines “use in commerce.” “Use in commerce” means “bona fide use of a mark in the ordinary course of trade.” When dealing with goods, an individual uses a mark when they place it on the goods, their containers, or documents associated with the good or sale. The goods must then be sold or transported in commerce. When dealing with services, an individual uses a mark when they use or display it in the sale or advertising of services, and render the services in commerce.
As helpful as a statute might be in defining itself, questions will always persist. Often times, court decisions are essential in answering these questions. Recent trademark cases show how the USPTO and courts apply these “use in commerce” definitions in practice.
Christian Faith Fellowship v. Adidas AG
One such case is Christian Faith Fellowship Church v. Adidas AG. The US Court of Appeals for the Federal Circuit decided the case this past November. Adidas aimed to cancel two of Christian Faith’s trademarks because Christian Faith did not use them in commerce before filing its use-based trademark application. The church, located in Illinois, supplied evidence that it sold two hats with the mark on them to individuals from Wisconsin. The Court determined the sale of two hats to out-of-state residents was well within the definition of “use in commerce.”
What does this decision tell us? Well, it looks like there is a relatively low threshold for “use in commerce” in trademark cases. Two individual sales are sufficient for your trademark to be “used in commerce.” Additionally, the goods do not have to cross state lines. If the customer crosses state lines to make the purchase, the trademark still qualifies as “used in commerce.”