Seattle Trademark Lawyer

Before a trademark can be registered, it has to be used.

There’s one exception to that — if a mark is registered in a foreign country, it can be registered in the States without having been used here. But even then, the registration eventually will cancelled if the owner deosn’t prove the mark has been used.

So what constitutes use?

Trademarks are brands. They tell consumers where the branded good or service comes from. Trademark use, therefore, means the selling or distribution of goods or services to consumers that carry a brand. For goods, that means affixing the mark to the good itself or placing it on product packaging. Services are intangible, so it’s not possible for owners to physically affix a brand to the thing they’re selling. Use of a trademark for services (technically, a “service” mark) is the next best thing — display of the mark at the point of purchase, such as on a sign in a brick-and-mortar store, and on a website where the services are offered if the owner is a web-based company. Letterhead and business cards don’t constitute trademark use, because those items refer only to the company, rather than signaling that a good or service comes from the company.

Trademark owners are often unsure what the U.S. Patent and Trademark Office (PTO) requires to support a trademark registration. There’s no mystery. What’s described above is what the PTO needs.

To register a mark with the PTO, the use also has to be interstate. That means in a sale or offering to an out-of-state or foreign purchaser. Localized use, such as sales only within a single city, usually does not constitute interstate commerce and, therefore, such use cannot support a federal registration.

Finally, use needs to be “lawful.” That means the good or service being distributed or sold with the mark can’t be illegal. This requirement has become more important recently with the legalization of medical and recreational marijuana by some states, including the State of Washington. Even if a mark would otherwise qualify for protection, it can’t be registered (or enforced) if its use is not lawful.

Trademark use is about putting the mark in front of actual customers — telling them the good or service comes from the owner. It takes the mark out of the abstract, and puts it into commerce.