Do I Need Actual Sales to Successfully Register a Trademark or Is An Offer to Sell Enough?

Originally I saw this question in an Avvo forum and it is a common question of my own trademark application clients.

With respect to goods, generally, one of the requirements to successfully register a federal trademark is a need to have actual sales of the goods in association with the proposed mark on or before the day the trademark application is filed.

Technically the federal Trademark Act, also known as the Lanham Act, only permits registration of trademarks wherein the mark is in “use in commerce.” Section 45 of Act 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 section goes on to define “use in commerce” for marks associated with goods and for marks associated with services.

With respect to marks in association with goods, “use in commerce” means: “(A) the mark 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.” So subsection (B) provides the answer to the question posed. Do I need actual sales to successfully register a trademark or is an offer to sell enough? With respect to goods, an offer to sell is NOT good enough; however, transportation of the goods in commerce is good enough and actual sales of the goods is good enough. With respect to a mark associated with goods, then if you do not have sales nor transportation in commerce, you cannot successfully federally register the mark on either the Principal Register, nor the Supplemental Register. But you may still be able to file a trademark registration application under section 1(b) of the Act, wherein the filing basis you assert is “intent to use” or ITU.

With respect to marks in association with services, “use in commerce” means: “when the mark 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.”
Lastly, note both the goods definition and the services definition of “use in commerce” include the term “commerce.” Within the Act, “commerce” has a special meaning. This is actually how the Act has any federal Constitutional power, as “commerce” is tied to the Commerce Clause of our federal Constitution, see Article I, Section 9, Clause 3, one of the enumerated powers of Congress. Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Congress may clearly regulate trade from one state to another state, i.e. interstate trade. And Congress may clearly regulate trade any or more States or the federal government and any foreign nation. However, what is less clear, is whether Congress may regulate matters of intrastate trade, with Supreme Court decisions going both ways on that issue and being highly fact dependent. Thus to be safe, ideally you want your sale of at least some of goods to be interstate or to a foreign country, as that is trade that Congress can clearly regulate and thus would constitute “use in commerce.”