There is no requirement that you must actually use a trademark prior to filing a trademark application. However, prior to obtaining a rademark tregistration you must demonstrate to the trademark office that you are using the mark “in commerce” which can be regulated by Congress.
So what exactly is required to demonstrate that you are using a trademark “in commerce”?
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 45 defines “use in commerce” as follows:
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce–
(1) on goods when–
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Commerce which may be lawfully regulated by Congress most commonly means interstate commerce, in other words, commerce which crosses state lines. Other types of commerce which may at first seem like commerce contained solely within one state also meet this definition however:
• Offering services via the Internet has been held to be commerce that can be regulated by Congress. Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff’d, 152 F.3d 920 (2d Cir. 1998) (Table), cert. denied, 525 U.S. 834 (1998).
• Servicemark used to identify a single restaurant which sometimes serves interstate travelers held to be commerce which can be regulated by Congress. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), cert. denied 502 U.S. 823 (1991).
• Hotel located in one state is using trademark in commerce as it out-of-state guests. In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966).
• Local wine store which imports wines from other countries held to be commerce which Congress can regulate. In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977).
• A single auto service station which offered services to customers travelling on federal highways held to be commerce which can be regulated by Congress. In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964).
• A single pool hall which advertises in more than one state held to be use in commerce which Congress can regulate. U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020, 1022 (TTAB 1984)
While at first blush many business activities appear to be purely intrastate activities, any activity which affects interstate commerce is commerce which the courts have determined that Congress can regulate.
Whether a trademark applicant is (or can in the near future) use the trademark “in commerce” should be determined by the applicant or his or her attorney prior to filing a trademark application. In addition, the applicant or the applicant’s attorney should prepare (or plan) a specimen demonstrating use in commerce which clearly meets the trademark office’s specifications.