Registering a Trademark used in Commerce

Registering a Trademark

Registering a Trademark requires proof showing use of the mark.
Registering Trademarks used on a website requires proof of use such as, price, quantity, buy-now, etc.

Trademarks are protected under state, federal and common law based on proof of actual use of the particular word, phrase, style, design, color, smell or sound.  Registration provides several important benefits, including the ability to obtain monetary damages and certain presumptions after a period of time on the principal registry. Federal registration requires federal or interstate use, while state registration only requires in-state or intrastate use.

Use in Commerce

Proof of use in commerce will vary with each case, but generally trademark use is deemed to be in commerce when it is placed in any manner on the goods, their containers, associated displays, on labels or tags.  Often times when registering the mark, the US Trademark Office requests that the trademark owner submit evidence showing use of the mark.  This use is often proof that the mark is placed on the goods as a tag or label or used in connection with services.

Many trademarks are used online and on the internet for selling goods and offering services.  It is not uncommon to attempt to use online or internet evidence, like a copy of a website when registering a trademark.  However, many people misunderstand what is needed for proving use of the trademark online.

Use sufficient for registering a trademark can be placed in any manner on the goods, their containers, the displays or on tags or labels.  Website proof does not qualify as a container, label or tag.  It usually qualifies as a display associated with the goods.  To qualify as trademark use for a display associated with the goods, the display must usually be a point of sale display.  This means, it must be located at the final location where the purchaser can actually purchase the goods.

Often times, when considering a webpage as a trademark specimen, the webpage must include information essential to making a purchasing decision.  Mere advertising is not sufficient to support a trademark registration.  This means, the webpage should include information like price or range of prices for the goods, minimum quantities, accepted methods of payment and shipping methods. While no single piece of information is required, if virtually all important aspects of the transaction are extraneous to the webpage, it will most likely not be considered a point of sale display sufficient for registering a trademark. If you would like assistance from a Trademark Attorney registering a trademark used on a webpage, please call our office.