Please see below: "When you apply for federal trademark registration questions are asked about your mark and commerce, in connection with the goods and/or services indicated in your application." "In practical terms: "Use in Commerce" could mean that your product (goods) or service was sold outside of the state in which it originates or was advertised out of state." _____________________________________________________ My Question..... A Tademark was Registered in July and you ended up getting a notice of acceptance after the opposition. However, Someone else only advertised their store with the trademark..on twitter ( 2 monthes prior to filing for the trademark), does that count as being advertised out of state? Hypothetically, if they didn't sell any items and all they did was tweet out a link on twitter...does this count as being "advertised out of state" They also NEVER used TM or SM ANYWHERE on their website/social media. Any help with this is appreciated! Best, -C
I am not sure exactly what you are asking. Whether you are trying to uphold your own trademark or invalidate someone else's and without the exact examples in question it is hard to answer. The whole point about "use in commerce" is that trademarks are usually awarded to the FIRST person to use the mark in commerce. It is sometimes called a race to the marketplace. So, if the mark in question was part of a tweet is may or may not demonstrate some use in commerce. Again, it is hard to give any opinion without any context on the tweet or the nature of the tweet. For example was it part of advertising or pitching something for sale? Was just a random tweet that happens to use the phrase that someone else later wants in a trademark? You do not need to use the â„¢ symbol when claiming that the use was first in commerce, but it obviously helps show it was your intention to claim the mark. Without more details not much else to say.
Thanks.... Ok.... i registered the mark in July and someone opened up a shopping cart site online and tweeted out their shopping cart website in May. The mark went up for opposition around Nov... and no one opposed it.... i believe i was issued a notice of allowance. All the other person did was open up a shopping cart site online and tweet out in May , their website. (prior to me registering the mark) ( im not sure if they sold anything). They also NEVER used TM or SM on their website. I already have the trademark, but does having a shopping cart website and tweeting out their link , count as use in commerce / advertising in commerce? ( I do not have the official registration yet) Thoughts? Thank you,
I still not real clear on your exact question. But if they have not filed some opposition to your mark I would not worry about it. Why is this coming to your attention - did you just search the mark and found the tweet or did they do something that makes you think they are contesting your registration? If you want to PM more specific information I can take a look at it.
They are selling products with our trademarked name on it..... I wasn't sure if they qualified for "use in commerce / advertising in commerce" , since they had a shopping cart site / they tweeted their shopping cart link out... 2 months prior to us doing the registration.
If they are selling an item with a term on it that would be use in commerce. (without seeing the tweet it is hard to speak about that, but if they are actually selling the item with the mark then there is really no question they are using the mark in commerce) 1. I am not sure what their tweet has to do with it unless the tweet has that particular item in it or mentioned the TM. If it just said go check out Joe's Store then you don't even know if the item was even for sale then, so you don't attribute the tweet to the first use in commerce. Use in commerce would be when they started selling the item, presumably on their website. If they specifically tweeted about the item in question and referenced the mark, then the tweet might well be their first use in commerce even if it came before any actual sales. 2. There are multiple classes of trademarks so two businesses can use the same exact mark provided they are not using it for the same thing. A prime example is Delta Faucets and Delta Airlines both use the trademarked term Delta but do not cause confusion and are not infringing on the other party's mark. It is not clear that you and this other company are in the same type of business. 3. Trademarks can have geographic limitations as well. I don't know how you are using your mark, but since the other person is online, that is probably not a limiting factor for them. When you say, "They are selling products with our trademarked name on it" do you mean they are now selling things that obviously are meant to convey your trademark or that they, even before you registered your mark, were selling something that contains the mark in question? Again, why is this a concern now? Have they made some issue out of it or did you just find it in some search and are concerned? Are you looking to enforce your mark and get them to stop selling something? Are you worried about them coming after your mark and trying to have it cancelled? Either way, you would most likely want to hire a trademark attorney to handle the situation. I am happy to try and give you some guidance and answer questions but when it comes to actually trying to defend your mark or enforce your trademark you should work with an attorney.
Thanks for your feedback.... I just found this.... which answers my question ---> http://www.gpo.gov/fdsys/pkg/FR-2011-07-12/pdf/2011-17121.pdf
I don't particularly see how any of that deals with the issues you've been asking about. Anyway, if you think they do, you should verify that they have become law since that document was just proposed rules that may not have gone into effect as written. http://www.uspto.gov/web/offices/com/sol/og/2011/week52/TOCCN/item-474.htm
OP, if I understood what you've written so far, are you looking to prevent that other party from possibly using the term in a similar or even competing manner as your trademark, if any?
From your questions, I think you are confused. Here are three fairly basic statements to keep in mind: 1. Trademarks can be established by USE as well as registration. 2. Failing to put a TM or SM on a trademark does not prevent a trademark from being created by use. 3. Registration of a trademark does NOT negate rights that existed in another trademark prior to the date of the application for registration. Whether the prior use established a trademark, and what effect that has on your trademark, is something that you should get professional counsel on.
Trademark law is really REALLY complicated. If this is a commercial venture, it is best if you get the advice of an attorney who specializes in trademark law.