Introduction
Under US trademark law, rights in a mark are fundamentally grounded in actual use—not mere creation, conception, or registration. A trademark or service mark must be actively used in commerce to identify and distinguish the source of goods or services before legal protection attaches. This principle, codified in the Lanham Act (15 U.S.C. §§ 1051–1127), distinguishes the American system from many foreign jurisdictions where registration alone can confer rights.
Statutory Foundation
15 U.S.C. § 1127 defines “use in commerce” as:
“The bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
The statute distinguishes between goods and services:
For goods, a mark is “used in commerce” when (a) it is placed on the goods, their containers, displays, tags, or labels (or on associated documents where placement on goods is impracticable), and (b) the goods are sold or transported in commerce.
For services, a mark is “used in commerce” when (a) the mark is used or displayed in the sale or advertising of the services, and (b) the services are rendered in commerce or in more than one state.
“Commerce” under the Lanham Act means all commerce that may lawfully be regulated by Congress—principally interstate commerce (across state lines), commerce between a US state and a foreign country, or commerce between US territories.
Bona Fide Use vs. Token Use
The law demands that use be bona fide—genuine commercial activity in the ordinary course of trade. The following do not satisfy the requirement:
Token use: Isolated or minimal transactions made solely to establish or preserve trademark rights, rather than to conduct genuine business.
Sham transactions: Sales manufactured for the sole purpose of creating an appearance of use, where no real commercial exchange occurs.
Advertising alone: Merely displaying or advertising a product under a mark—without an actual sale or shipment—does not constitute use in commerce.
Key case — Ultrasun AG v. Sun Precautions (TTAB, 2023): The applicant possessed only a single prototype tube of sunscreen, displayed it on a website and in a retail store, but never made an actual sale or transport before the filing deadline. The Board held that this constituted “mere advertising” and failed to demonstrate use in commerce.
Common Law Rights Through Use
Even without federal registration, a business acquires common law trademark rights by being the first to use a mark in commerce in a given geographic area. These unregistered rights are recognised by state and federal courts and are enforceable against subsequent users of confusingly similar marks in the same territory.
However, common law rights are geographically limited to the area of actual use and lack the nationwide scope, legal presumptions, and enhanced enforcement tools that come with federal registration on the Principal Register.
Federal Registration and Use in Commerce
The USPTO offers two filing bases that interact with the use requirement:
Section 1(a) — Use-Based Application: The applicant must demonstrate that the mark is already in use in commerce at the time of filing.
Section 1(b) — Intent-to-Use (ITU) Application: The applicant declares a bona fide intent to use the mark in commerce. Registration will not issue until the applicant files a Statement of Use proving actual commercial use, supported by specimens. The applicant receives a limited period (with possible extensions up to 36 months) to demonstrate use.
In both cases, a mark cannot ultimately be registered without satisfying the use-in-commerce requirement.
Ongoing Use: Maintenance and the Risk of Abandonment
The use-in-commerce obligation does not end at registration. It persists for the life of the mark:
Section 8 Declaration of Use: Registrants must file a declaration between the 5th and 6th year after registration (and subsequently with each 10-year renewal) affirming continued use in commerce. Failure to file results in cancellation of the registration.
Section 9 Renewal: Required every 10 years, paired with a renewed declaration of use.
Abandonment through non-use is governed by Section 45 of the Lanham Act: a mark is deemed abandoned when “its use has been discontinued with intent not to resume such use.” Non-use for three consecutive years creates a rebuttable presumption (prima facie evidence) of abandonment.
Key case — Ross Bicycles LLC v. Century Sports, Inc. (TTAB): The Board cancelled a registration for ROSS bicycles where evidence showed the mark had not been used in commerce for at least four years, and the owner offered no evidence of intent to resume use.
By contrast, in My Organic Zone v. Shawgo (TTAB), the Board declined to find abandonment where the registrant provided interrogatory responses, product offerings, and specific information demonstrating continued use.
Evidentiary Considerations
The types of evidence relevant to proving or defending use in commerce include:
| Evidence Type | Purpose |
| Sales invoices, receipts, and purchase orders | Demonstrate actual transactions in commerce |
| Shipping records and bills of lading | Prove transport of goods across state lines |
| Website screenshots showing the mark with a functioning purchase mechanism | Show offer for sale (combined with proof of sales) |
| Advertising materials, catalogues, and promotional media | Corroborate use (not sufficient standing alone) |
| Customer testimonials and affidavits | Support bona fide nature of use |
| Tax returns and financial statements reflecting revenue under the mark | Quantify ongoing commercial activity |
Practical Implications
Registration timing: Do not file a use-based application or Statement of Use before actual sales or shipment have occurred. Premature claims of use may result in rejection or cancellation.
Document your use: Maintain contemporaneous records of sales, shipments, and advertising from the date of first use forward. These records are critical in opposition or cancellation proceedings.
Interstate nexus: Ensure that commercial activity crosses state lines or involves foreign commerce. Purely intrastate activity does not satisfy the Lanham Act’s jurisdictional requirement for federal registration, though it may support state common law rights.
Continuous use: Do not allow extended periods of non-use without documenting your intent to resume. A gap of three or more years exposes the registration to a presumption of abandonment.
Quality control: For licensed marks, the owner must exercise control over the nature and quality of goods or services provided under the mark by related companies, as uncontrolled licensing (“naked licensing”) can constitute abandonment.
Conclusion
The use-in-commerce requirement is the cornerstone of US trademark law. Unlike systems that grant rights through registration alone, the American system demands that a mark serve its essential function—identifying the source of goods or services to consumers in actual commercial transactions. This requirement applies at every stage: acquisition of rights, federal registration, maintenance of registration, and enforcement. Failure to establish, document, and maintain genuine commercial use exposes mark owners to refusal of registration, cancellation, or loss of rights through abandonment.
