TMEP 901.03: Commerce That May Be Lawfully Regulated By Congress

October 2017 Edition of the TMEP

Previous: §901.02 | Next: §901.04

901.03    Commerce That May Be Lawfully Regulated By Congress

The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress.15 U.S.C. §1127; see Christian Faith Fellowship Church v. Adidas AG,841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir.2016)  The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.

"Territorial commerce" is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the U.S. Virgin Islands) or between the United States and a territory of the United States.

Intrastate use of a mark may qualify as use in commerce within the meaning of the Act if the intrastate use is of a type that would, taken in the aggregate, have a direct effect on interstate commerce. See Christian Faith Fellowship Church,841 F.3d at 993, 120 USPQ2d at 1645; (finding intrastate sale of two hats to out-of-state customer was "use in commerce" because such a transaction is "‘quintessentially economic’" and, "taken in the aggregate, would cause a substantial effect on interstate commerce"); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in "use in commerce"); In re Silenus Wines, Inc.,557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (intrastate sale of imported wines by importer constitutes "use in commerce," where goods bearing labels supplied by applicant were shipped to applicant in United States); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964) (automotive service station located in one state was rendering services "in commerce" because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020 (TTAB 1984) (billiard parlor services satisfy the "use in commerce" requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Dep't Stores, Inc.,137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).

In some cases, services such as restaurant and hotel services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause. See In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968); In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967).

The term "foreign" is not acceptable to specify the type of commerce in which a mark is used, because it does not clearly indicate that the mark is in use in a type of commerce that the U.S. Congress can lawfully regulate.  Unless the "foreign commerce" involves the United States, Congress does not have the power to regulate it.  Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States. Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Aktieselskabet af 21.November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861 (TTAB 2006); Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2d Cir. 1998); Mother’s Rests. Inc. v. Mother’s Bakery, Inc., 498 F. Supp. 847, 210 USPQ 207 (W.D.N.Y. 1980); see also Honda Motor Co., v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) ("[T]he evidence that applicant relies upon through its foreign registrations and Internet printouts does not demonstrate trademark use for the claimed goods.  Further, these documents do not show that applicant has an intent to use the mark in the United States.")

Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (Table).

An applicant is not required to specify the type of commerce in which the mark is used.  The USPTO presumes that an applicant who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record.  See TMEP §901.04 regarding the circumstances where an examining attorney should inquire as to whether the mark is in use in commerce that can be regulated by the U.S. Congress.