Trademark Use in Commerce

From The Bosland Law Education Library

Lecture Overview

Trademark rights in the United States arise primarily through use in the marketplace rather than through the mere creation of a name or symbol. This lecture examines the legal requirement that trademarks be used in commerce in order to acquire and maintain protection under federal law. We begin by examining the historical origins of this principle, then review the statutory framework established by the Lanham Act. We then unpack two related but distinct ideas embedded in the phrase “use in commerce”: first, whether a designation is used as a trademark identifying the source of goods or services, and second, whether that use occurs in commerce that Congress may regulate. Finally, we consider judicial decisions that illustrate how courts evaluate these requirements and discuss the practical implications for businesses developing and protecting their brands.

1. Historical Origin

The requirement that trademarks be used in commerce reflects the historical origins of trademark law itself. Early trademark protection did not arise from statutory rights granted by the government. Instead, trademark disputes developed within the common law doctrine of unfair competition (See Lecture: What Is Unfair Competition, Legally? — Lecture Pending).

Courts originally intervened when one merchant attempted to sell goods by falsely representing them as the goods of another seller. The legal concern was not simply copying a symbol, but misleading consumers and appropriating the commercial reputation of an established business.

Because of this history, trademark protection developed around actual marketplace activity. A merchant obtained protection not by inventing a mark in the abstract, but by using that mark to identify goods offered for sale.

When Congress later enacted federal trademark legislation, it did not abandon this principle. Instead, the statutory framework preserved the idea that trademark rights arise through use of a designation as a source identifier in the marketplace.

Understanding this historical foundation helps explain why trademark law differs from other forms of intellectual property. Copyright protection arises automatically when an original work is created (See Lecture: What Is Copyright, Legally?). Patent protection arises through a formal application and examination process. Trademark rights, by contrast, generally arise and are maintained through commercial use of a mark identifying the source of goods or services.

2. Statutory Framework

The modern statutory framework governing trademarks appears in the Lanham Act, codified primarily at 15 U.S.C. §§1051–1141.

The Lanham Act incorporates the traditional principle that trademark protection depends on use in commerce. For example, Section 1 of the Act provides that a person who uses a trademark in commerce may apply to register that mark with the United States Patent and Trademark Office (See Lecture: Federal Trademark Registration — Lecture Pending).

Section 45 of the Lanham Act provides the statutory definition of “use in commerce.” For goods, a mark is deemed to be used in commerce when:

• the mark is placed on the goods, their containers, labels, or associated displays; and

• the goods are sold or transported in commerce

The statute contains a similar definition for services, requiring that the mark be used or displayed in the sale or advertising of services and that the services be rendered in commerce.

These provisions reflect the basic premise that federal trademark law regulates commercial source identification occurring in commerce that Congress may regulate.

Even when a business seeks federal registration without having yet used a mark in commerce, the Lanham Act still requires a bona fide intention to begin such use (See Lecture: Intent-to-Use Applications — Lecture Pending). Eventually, the applicant must demonstrate actual use of the mark in commerce through submitted evidence (See Lecture: Specimens of Trademark Use — Lecture Pending).

3. Trademark Use: Function as a Source Identifier

The first requirement embedded in the phrase “use in commerce” is that the designation must be used as a trademark. In other words, the mark must function as a symbol that identifies and distinguishes the source of goods or services.

Not every appearance of a word, phrase, or design qualifies as trademark use. Courts and trademark examiners regularly distinguish between source-identifying uses and ornamental or informational uses.

For example, a logo appearing on product packaging, labels, or advertising materials often functions as a trademark because consumers understand it as identifying the producer of the goods. By contrast, a phrase printed prominently across the front of a shirt may be perceived merely as decoration rather than as an indicator of source.

This distinction is sometimes referred to as the doctrine of ornamental use (See Lecture: Ornamental Use and Trademark Function — Lecture Pending). When consumers view a designation merely as decorative matter rather than as a brand identifier, trademark rights may not arise.

The question of whether a designation functions as a trademark often overlaps with other core doctrines in trademark law. Courts evaluating trademark use frequently consider the distinctiveness of a mark and how consumers perceive it in the marketplace (See Lecture: The Spectrum of Trademark Distinctiveness — Lecture Pending; See Lecture: Secondary Meaning — Lecture Pending).

4. Use in Commerce: Congress’s Regulatory Authority

The second component of the phrase “use in commerce” concerns the constitutional authority of Congress.

The Lanham Act applies only to commerce that Congress may regulate under the Commerce Clause of the United States Constitution (Article I, Section 8, Clause 3). As a result, federal trademark law generally requires that the relevant activity occur in interstate commerce or otherwise affect interstate markets.

This requirement does not mean that a designation cannot function as a trademark unless it is used in interstate commerce. Businesses may acquire trademark rights under state common law through purely local use of a mark. However, federal trademark registration and the remedies provided by the Lanham Act depend on the existence of use in commerce that Congress may regulate.

In practice, courts have interpreted the commerce requirement broadly. Modern commerce frequently involves interstate transactions, online sales, or activities affecting interstate markets. As a result, most commercial trademark uses will satisfy the jurisdictional reach of the Lanham Act.

5. Key Cases

Judicial decisions illustrate how courts analyze both the source-identifying function of a mark and the scope of commerce regulated by Congress.

In Steele v. Bulova Watch Co., 344 U.S. 280 (1952), the Supreme Court held that the Lanham Act could apply to trademark infringement conducted by a United States citizen in Mexico because the conduct had substantial effects on United States commerce. The decision illustrates the broad reach of federal trademark law when commercial activity affects interstate or foreign commerce.

Courts have also examined whether a designation is used as a trademark at all. In In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (T.T.A.B. 1982), the Trademark Trial and Appeal Board held that the phrase “MORK & MINDY” printed prominently across the front of clothing functioned as ornamental decoration rather than as a trademark identifying the source of the goods.

Similarly, courts have emphasized that trademark rights arise through actual use in commerce, not through mere adoption of a name. In Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991), the Federal Circuit reaffirmed that priority in trademark law generally depends on which party first uses the mark in commerce in connection with goods or services. That case also addresses the expansion of the reach of the federal trademark law to "‘all commerce which may lawfully be regulated by Congress.’ 15 U.S.C. § 1127 (1976). [and changing] from the phrasing of the former trademark acts, which phrasing expressly limited trademark jurisdiction to interstate and foreign commerce and commerce with Indians.” Id. at 664, citing Silenus Wines, 557 F.2d at 809, 194 USPQ at 264-65.

Together, these cases illustrate how courts evaluate whether a designation functions as a trademark and whether the activity falls within the regulatory reach of federal trademark law.

6. Practical Implications and Open Questions

The requirement of use in commerce has significant implications for businesses developing and protecting brands.

First, businesses acquire trademark rights through actual commercial use, not simply by inventing a brand name or designing a logo. Entrepreneurs who select a brand but delay launching products may discover that another business begins using the mark first and acquires priority rights. (See Lecture: Intent-to-Use Applications — Lecture Pending).

Second, the use requirement shapes the federal registration process. Applicants must eventually demonstrate how the mark appears in connection with goods or services offered in commerce (See Lecture: Specimens of Trademark Use — Lecture Pending).

Third, trademark rights may be lost if a mark is no longer used in commerce. When a mark is abandoned through nonuse, the owner may lose the legal protections associated with the mark (See Lecture: Abandonment of Trademark Rights — Lecture Pending).

Finally, the concept of use in commerce continues to evolve as commercial activity increasingly occurs online. Digital marketplaces, social media platforms, and online services raise new questions about how trademarks function in modern commerce (See Lecture: Trademarks in Online Marketplaces — Lecture Pending).

Related Lectures

• Trademark Use in Commerce — Lecture Pending

• The Spectrum of Trademark Distinctiveness — Lecture Pending

• Generic Terms and ‘Genericide’ — Lecture Pending

• Trade Dress Protection — Lecture Pending

About the Author

David Bosland is an intellectual property attorney who advises businesses and creators on trademark protection, copyright enforcement, and brand strategy. Learn more about David Bosland.