The Concept of Use in Commerce Vs Analogous Use under US Trademark Law

The concept of “use” in U.S. trademark law is far more layered than the straightjacket approach taken by registration-based jurisdictions. In the United States, ascertaining priority for trademark rights does not depend on registration alone; actual adoption and use of a mark in trade, and in a particular territory, also play an important role.

“Use in commerce” and “analogous use” are distinct concepts under U.S. trademark law. Technically, “use in commerce” requires compliance with the statutory requirements of 15 U.S.C. § 1127, including, for service marks, use or display of the mark in the sale or advertising of services and the rendering of those services in commerce.

However, the doctrine of analogous use may permit a party to establish trademark priority based on substantial pre-launch promotional activity even before technical use in commerce has commenced, provided that the activity is sufficiently public and creates an association in the relevant purchasing public between the mark and the source of the prospective goods or services.

Use in Commerce:

“Use in commerce” is defined under Section 45 (15 U.S.C. § 1127) “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.” [1] 

In simple terms, a mark counts as used in commerce only when it is genuinely used in real business or commerce as recognised by Congress and not merely claimed on paper as a token. This genuine use of a mark on goods or in connection with services is referred to as technical or actual use and forms the basis of the federal standard. 

With respect to goods, two conditions must be satisfied: The mark must appear on the product, its packaging, or its labels, and the product must actually be sold or shipped within the reach of Congress’s commerce power. For example,  a company decides to sell home furniture under the name “Wood Builders” in the state of Arizona. If it prints the name on the furniture and labels and sells it to customers in different states, the mark is in use in commerce for goods. If it only registers a domain, prints business cards, and announces that home furniture is coming soon, it has no use in commerce because it has sold or shipped nothing under the mark. The company could still apply by stating in writing a good faith intention to use the mark, and it would need to begin real use afterwards to complete the registration.

With respect to  services, the mark must be displayed while  providing or advertising the service, and the service must actually be provided. For instance,  a law firm advertises its services under the name “BSS Legal” in Delaware and actually renders those services to clients in Utah and Chicago. In this case it can be  said that the mark is used in commerce for services.

Analogous Use: 

Section 2(d) of the Lanham Act [2] prohibits registration of a mark that resembles a previously used mark or trade name in the United States, which is likely to cause confusion, mistake or deception. The Trademark Trial and Appeal Board (“TTAB”) and the Federal courts interpret the word “previously used” to prior use as encompassing pre-sale activities that establish public recognition of the mark, which is termed analogous use.

The Federal Court in Cosmic Crusaders LLC v. Andrusiek (2023) [3], citing Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002), held that analogous use occurs when a mark “creates an association in the minds of the purchasing public” with the provider’s goods, even if it is not used on the goods themselves as required under Section 45 of the Lanham Act. Accordingly, priority may be shown through a “prior registration, prior trademark or service mark use, or prior use as a trade name,” and analogous use is an additional route.

Such use may include displaying the mark on promotional materials rather than on the goods offered for sale. Such uses, for example, in “advertising brochures, catalogs, newspaper ads,” establish priority if they create sufficient public impact before a rival user acquires rights, provided they are followed by actual commercial use within a reasonable time. 

In the Cosmic Crusaders LLC case, both parties sold comic books under the mark “CAPTAIN CANNABIS”. While the appellants relied on their April 2014 registration date, Andrusiek claimed priority based on analogous use found by the Board from 2006 onwards, followed by actual trademark use in 2017. Upholding the TTAB’s cancellation of Cosmic Crusaders’ registration, the Federal Circuit held that “substantial evidence supported the evidence” that the purchasing public associated the mark with Andrusiek well before 2014 and that his subsequent actual use in 2017 occurred within a commercially reasonable time. 

However, not every instance of pre-sale publicity amounts to analogous use, as the party relying on it must show substantial impact on the purchasing public in terms of association of the mark with its goods or services.

Conclusion: 

The distinction between use in commerce and analogous use reflects the balance that U.S. trademark law seeks to strike between commercial activity and the protection of prior rights. The former requires bona fide use of a mark in trade and the latter prevents a party from disregarding earlier efforts to establish public recognition simply because actual commercial use has not yet begun. However, this protection is not automatic, as the requirement of substantial public impact ensures that priority is not established through mere promotional activities. Thus, the two doctrines work together to decide when the rights of a trademark arise and whose claim to priority deserves recognition.

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[1] Section 45 (15 U.S.C. § 1127) - 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 chapter, 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.

[2] 15 U.S.C. § 1052(d).

[3] Cosmic Crusaders LLC v. Andrusiek, No. 2023-1150, 2023 WL 6889054 (Fed. Cir. Oct. 19, 2023).