Yes, although there are nuances and a plan of action may be needed. To more specifically evaluate this question, focus must turn, first, to whether the products and services at issue are, in fact, being provided “only locally.” If products or services are, indeed, being provided only locally, then the focus must turn to how to begin providing the goods or services in “interstate commerce.” The experienced trademark attorneys at Revision Legal offer more information below.

Use in interstate commerce requirement

One of the legal requirements for registering a federal trademark with the U.S. Patent and Trademark Office (“USPTO”) is “use in interstate commerce.” In somewhat simple terms, this means that the products sold have “crossed State lines” or that the services have been provided in more than one state.

Given the interconnectedness of the U.S. economy and the ubiquitous and omnipresence of the internet, it may turn out that your products or services HAVE been sold or used in interstate commerce. Note that only a small quantity of products or services must cross state lines — a few dozen products or services provided to a few clients in another State. So, it may turn out that you have NOT been providing goods and services “only locally.” If there is sufficient evidence of “use in interstate commerce,” then an application for federal trademark registration can be filed immediately.

Filing an intent-to-use application for registration

Now, if, in our case, there is no evidence of “use in interstate commerce,” an application for federal trademark registration can still be filed immediately. However, the type of application will be an “intent-to-use” application for registration. Generally, the application provides the standard information and then states that the applicant intends to use the trademark — within a year — in interstate commerce. If the trademark application is acceptable in all other respects, the USPTO issues what is called a “Notice of Allowance,” which lets the applicant begin using the trademark. After use has begun, the applicant then submits the proof and specimens of use in interstate commerce to the USPTO. If acceptable, the trademark application is finalized, and the trademark becomes registered.

During the USPTO’s processing of the application, an “action plan” can be drawn up for how to begin providing the goods or services in interstate commerce. That is, a plan is needed to generate sufficient use in interstate commerce to satisfy the legal requirements for registration of a federal trademark without too much difficulty, time, or expense. This is perfectly legal, acceptable and expected by the USPTO. Note again that only a small quantity of products or services must cross State lines to satisfy the “use in interstate commerce” requirement.

How Courts and the USPTO Define “Interstate Commerce”

The use in interstate commerce requirement for federal trademark registration has been interpreted broadly by both the USPTO and federal courts. The Commerce Clause of the U.S. Constitution gives Congress the power to regulate commerce among the several states, and courts have consistently held that Congress may regulate any activity that substantially affects interstate commerce, even if the activity itself is local.

In the trademark context, courts have found that interstate commerce is satisfied in a variety of situations that might not intuitively seem national in scope. In Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991), the Federal Circuit held that a restaurant that served customers who traveled from out of state satisfied the interstate commerce requirement, even though the restaurant itself was entirely local. Similarly, advertising on a website accessible to out-of-state users has been held sufficient in many cases. Accepting orders by mail, telephone, or online from out-of-state customers — even infrequently — has been found to satisfy the requirement.

This means that many businesses that think of themselves as local may already be satisfying the interstate commerce requirement through their ordinary operations. The key is to document these transactions and to ensure there is actual, verifiable evidence of out-of-state activity when the trademark application is filed.

State Trademark Registration as an Interim Strategy

For local businesses that genuinely cannot yet satisfy the federal use in interstate commerce requirement, state-level trademark registration provides an important interim protection. Every U.S. state maintains its own trademark registration system, and state registrations protect the mark within that state. While state trademark registrations do not provide the same nationwide priority and enforcement mechanisms as federal registrations, they do provide:

• Constructive notice to would-be infringers within the state
• A legal presumption of ownership of the mark within the state
• The right to sue for trademark infringement in state court
• Documentation of prior use that can be important in later federal proceedings

State registration is also considerably faster and cheaper than federal registration. Many state trademark registrations are issued within a few months and cost only a few hundred dollars. For a local business that is not yet ready to file federally, state registration provides meaningful protection while the business works toward satisfying the federal use requirements.

The Supplemental Register: An Additional Federal Option

Local businesses and startup brands that have begun use in interstate commerce but whose marks are primarily geographically descriptive or otherwise lack the distinctiveness required for the Principal Register may still be able to obtain some federal protection through registration on the Supplemental Register. The Supplemental Register was established in the Lanham Act specifically to allow marks that are not yet distinctive enough for the Principal Register to obtain a federal registration that can be used in international trademark filings.

Registration on the Supplemental Register does not carry the same legal presumptions as the Principal Register — it does not create nationwide constructive notice of the mark, does not allow the mark to become incontestable after five years of use, and does not preclude others from challenging the mark’s distinctiveness. However, it does allow the owner to use the ® symbol, permits the mark to be used as the basis for international registrations under the Madrid Protocol, and establishes a public record of use that can support later arguments for Principal Register registration on the basis of acquired distinctiveness.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.