Trademark: understanding commercial use and classification

| Feb 22, 2021 | intellectual property

Branding can make or break a business. That’s why they spend a lot of time, money, and effort is distinguishing themselves from their competitors. One way to do this is to develop a strong portfolio of intellectual property that includes patents, copyrights, and trademarks. While patents and copyrights offer strong protections as soon as an application is filed and approved, trademarks are a little different. Here are some of those ways so that you can get a better sense of what you need to do to protect your business interests and your brand.

The mark has to be in commercial use

Before you can obtain protection for a trademark, the mark has to be in some sort of commercial use. In other words, you can’t hoard protected marks with no intention of using them. So, you’ll have to demonstrate some sort of commercial purpose for the mark. But mere token use of the mark is likely insufficient. Instead, you’ll want to show that the use of the mark occurs in the ordinary course of trade.

This doesn’t mean that the use has to be currently active. Instead, you can seek protection through an Intent to Use application. Here, you have to a show a bona fide intent to use the mark, but once you do so then you can reserve protection for the mark. This is a great way to get out in front of your branding to ensure that you have the fullest protection possible.

To register a trademark you also have to show that the type of commerce where the mark is to be used will be subject to Congressional regulation. That might sound like a challenging thing to show, but it can actually be relatively easy since the federal government regulates interstate commerce. The definition of this area of the law has also generally recognized goods and services sold in one state as interstate in nature.

Use of specimens

Once you demonstrate that your mark is being used in commerce you’ll need to submit evidence of its use. This evidence is often referred to as specimens. Labels, photographs, packaging, and even displays of the product can all satisfy this requirement. Essentially, the federal government wants to see that the mark is actually in use and its tied to the good or services in question. That means for services things like advertisements, brochures, and invoices can serve as specimens.

Beware of classification

It might seem easy enough to specify to which goods or services that you’re affixing your mark, but classification can be a little tricky. This is because certain goods and services that to you might seem linked together under one category may be recognized by the federal government as falling into separate categories. This means that the use of your mark may be unprotected in some instances. For example, beer is classified differently than wine and other spirits. So, you’ll want to make sure that you’re filing your trademark application in the proper classes to ensure full coverage.

Police your mark

Trademarks can provide strong protection for your brand, but only if you’re able to police them and take action against those who infringe on your mark. This means keeping an eye on your competitors and others in the field to see if their marks are causing consumer confusion. If you think that a mark that these entities is using is similar to yours and is causing confusion, then you might want to take legal action.

Acquire the knowledge you need to protect your interests

The law on trademarks can be confusing, but failing to understand them can be a real detriment to you and your business. That’s why it’s often best to work closely with a legal professional who is skilled in this area of the law and who can guide you throughout the process. Hopefully then you’ll be able to build the brand that you want and that sets your business on a path to success.