I don’t distribute my goods out of state. Can I still trademark my names?
The short answer is YES!
The Lanham Act (also known as the Trademark Act of 1946) is the federal statute that governs trademarks. Generally, the Lanham Act requires that a mark is used in interstate commerce before it may be registered as a federal trademark.
Thankfully, interstate commerce is broadly defined.
Traditionally, interstate commerce has been focused on whether or not goods have physically crossed state lines. Due to the nature of modern commerce, travel, and the expanding reach of the internet, the lines for what is truly “local” has changed over the years.
“Use in Commerce” Within a State
Adidas (the shoe and apparel company) tried to trademark “ADIZERO” for athletic apparel (fun fact-one of the founding brothers of Adidas broke off and formed the shoe company Puma). The Trademark Office blocked this trademark because of a likelihood of confusion with the trademark “ADD A ZERO,” which was a clothing trademark owned by a church in Illinois for its fundraising campaign to encourage its congregants to add a zero to their donations (as in don’t give $10, give $100).
Adidas argued that the church’s marks were not in interstate commerce. The Illinois church defended the alleged non-use in interstate commerce argument by offering evidence that it had sold two hats bearing the contested marks to a parishioner who resided across state lines in Wisconsin. The sale occurred within Illinois, so the church did not rely on a sale made to a customer located across state lines at the time of the purchase. Adidas argued that the sale of two hats were “De Minimis,” meaning too trivial or minor to merit consideration for interstate commerce. Adidas won at the trademark court and the decision was appealed.
The Federal Circuit on appeal clarified the broad protection of the Lanham Act and reversed the trademark court holding. The Federal Circuit stated that the Lanham Act defines interstate commerce as all commerce which may lawfully be regulated by Congress.
The Federal Circuit held on appeal that the church’s sale of two hats showed that the marks were used in interstate commerce for Lanham Act purposes. The Federal Circuit Court held that the church was not required to present evidence that its sale of hats actually affected interstate commerce, or even to show that the hats were destined to cross state lines. Rather, the church merely needed to show that its sale activity, even if just local, fell “within a category of conduct that, in the aggregate” could exert a substantial effect on interstate commerce.
Say That Again Please (In English)
You make goods. Your goods are offered for sale. Out of state people may purchase said goods at your retail location or other locales. These purchases in the aggregate can affect interstate commerce.
Helpful Tips
Because the law (or the courts’ interpretation of the law) can change, here are some practical tips to ensure that you have interstate commerce goods:
- When you release new goods, make sure to get it on the worldwide web (whether through your own website or through the various social media channels).
- Encourage your guests to review your goods on the various review websites (odds are good you will have plenty of out of state reviews).