trademark protection
Trademark registration question regarding "Actually using mark in commerce now"?
Question
Trademark registration question regarding "Actually using mark in commerce now"?
I have a unique website name which I want to trademark. I'm confused about the TEAS registration form part where it asks if the mark is actually used in commerce now or intending to use. I don't have any sales as of yet, but I do have the site up and a functional order form online (with the intent to accept any orders now). So does my current state equal "actually using in commerce?" or do I have to say i'm just intending to. I would prefer to say i'm actually using it to have the registration done in one step - but don't want to lose my trademark protections so want to make sure it's defined right. Hi Everyone. Thanks for your replies so far. I still have one question that I do not fully understand from your replies. The company is a service, and based on that you guys seem to be suggesting that it is "in commerce" when I advertise the service. But one question, is a service considered "advertised" when it is just offered on a public site or do you have to do active advertising such as giving out flyers or TV ads etc. Also, is listing the site on a search engine like yahoo considered "advertising"? Here are some more details in case you need them. The company name is something like companyname, llc, and the website is companyname.com, and I want to trademark "companyname". I will be applying for a "servicemark" since my site is a service. The service is an online software listing database, the I will be charging a monthly subscription to software companies to link to their sites. The servicemark will be displayed at the top of each page (in the form of a logo). Oh.. as far as if I am actually selling anything. I have an order form for software vendors to sign up for my subscription service on the site.
10 months ago - 2 answers
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I'll assume you've already done your due diligence in having comprehensive research conducted to ensure that the name you're interested in is truly available. Without knowing full details in regards to what business you're in, it's hard to say definitively. I'd recommend contacting a private search company or a trademark attorney to be sure. Here's what the USPTO has to say: "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." tess2 ... -- Link to quote Hope that helps!
by TM Express™
10 months ago
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Other Answers
A "website name" (perhaps meaning a domain name, which are ALL unique) is not a trademark until it is used in commerce as a brand, rather than a location. Similarly, a company name is not a brand until it is used in association with goods or services. You don't give enough information to tell if you're actually planning on selling anything with your website name on it. If not, then it isn't a trademark; it's just a domain name, a location on the Internet and your registration will be rejected. If you're selling "goods" like software or things people order, then OFFERING the goods with that brand shown on them (the website name) would be a "use in commerce", and you would include a screen shot of the goods with the brand on them or the brand on the download screen. If you're selling a "service" rather than goods, you only have to use the mark to advertise the service; you don't have to actually sell it yet. In your case, we don't have enough information to say, but you might have a "service" of selling things that are branded by someone else, rather than branded with your own website name. If you sell "website services" with your website name as the brand, then advertising that service would be a "use in commerce". The "intent to use" is for owners who want to reserve one or more brands prior to making any serious investment in advertising or packaging, or even spending money on a search report and clearance opinion. This is useful in highly competitive fields where even a few days of delay can give your competitors an opportunity to "steal" the idea in your brand and adopt something similar.
by bcnu- 10 months ago