Understanding Use As A Trademark
If you’re trying to understand trademark use, start by picking up a piece of fine pottery, china or glassware. Chances are, you’ll find the trademark imprinted on the bottom – such as Belleek®, Wedgewood® or Waterford®. The mark may not be emblazoned on the front of the plate as a design, but the product does include an indicator of source.
What Does A Trademark Mean?
This is the purpose of a trademark—to indicate source. The presence of the mark signals to the consumer that the product will be of the same kind and quality as to be expected from other products or services with the same mark.
A trademark does not guarantee a certain level of quality, only that the quality is consistent. For instance, a chicken McNugget® at a McDonald’s Restaurant in Boston will be the same as one at a McDonald’s Restaurant in Dallas, or from the McDonald’s Restaurant in Denver. In each case, the consumers (usually parents), rely on that consistency because they know they can find something their three-year-old will eat.
To obtain a trademark registration, the applicant must show the mark being used “as a trademark” and “in commerce.”
Trademark Use and Use In Commerce
To qualify as “Trademark Use,” the mark and/or logo must be displayed in such a way as to indicate source. For clothing, this is generally done with a hangtag or a label inside the clothing. Other products, such as jewelry, may feature the mark on the cardboard to which the item is attached or other packaging, while dishes and mugs might include the mark on the product itself.
Watch for ornamental/promotional use.
For the USPTO, “use in commerce” means that the products or service are being sold, and are not merely a complimentary promotional item provided to consumers or potential clients. Giveaway combs with the name and phone number of a barbershop does not constitute use as a trademark or use in commerce for combs. However, a promotional item might help to establish trademark rights in the actual barbershop services, if executed in a manner that otherwise complies with USPTO requirements.
It’s important to note that simply imprinting the logo on the front of a baseball cap, on the side of a coffee mug, or on a beach towel does not create trademark rights. Such use is considered by the U.S. Patent & Trademark Office (USPTO) as “merely ornamental,” because it is no more than decoration, or “ornamentation.”
Digital images are insufficient.
Further, simply creating a package mock-up, or a digital image of a product is not enough to provide any claim to trademark rights. The USPTO has increased its stringency on such submissions as evidence of use, rejecting them as insufficient proof that the mark is in use in commerce. This has resulted in an increasing number of Office Actions being issued, as well as applications being rejected or registrations canceled.
Understanding the frequently changing requirements set forth by the USPTO to register a mark can be tricky. Trust an experienced attorney to guide you through the process. We have more than twenty years of experience in trademark law, and including proper trademark use. Please reach out if you have questions about the use or protection of your mark.