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[BobRoberts]

Client sells product to out-of-state company, and bill (invoiced with trademark) sent to out-of-state company, but out-of-state company (unrelated to seller) requests that product be shipped from seller to a contractor in the same state of the seller, the contractor using shipment to assemble product. 

Is this a use in commerce that is regulatable by Congress?  I think so.  Thoughts?

fom TMEP 901.03:
(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)
Here, product with labels is imported.  In the case of client, an invoice with trademark is sent over state lines, and $$ is transferred over state lines for the sale of the goods...

Thanks for any input...

[TheTrademarkCompany]

Given the financial transaction crossed state lines I think that it is use in commerce.  Of note, if this is the only use I think there is a token use issue which would need to be addressed as well.

Matt Swyers

[JSonnabend]

How is there a token use issue?  If the transaction was bone fide (i.e., at arms length), the fact that there has been only a single transaction does not suddenly raise token use issues.

Also, the "use in commerce" requirement is not merely a "sale across state lines" issue (although that will satisfy the requirement in most cases).  The query is more accurately described as whether the transaction is one that "affects interstate commerce."

- Jeff

[TheTrademarkCompany]

Jeff-

In regard to your second thought that was our analysis ... it did affect interstate commerce because the sale was across state lines even if the goods were never shipped out of state.

In regard to your first comment, we recently had a case in involving one of our clients who is a national brand of ice cream going up against an upstart ice cream manufacturer in the Pacific Northwest.  The issue of priority of use was hotly contested.  We had national sales as early as ... we'll say 2005 ... but the upstart claimed priority back to late 2004 ... but after discovery it was determined that their claims of sporadic initial sales (one) that crossed state lines between Oregon and Washington was insufficient or token by the TTAB to establish use in commerce as early as 2004 sufficient to defeat our priority of use date in 2005 when the upstart did not begin full production and sale of its product until late 2005.

So that's what my thoughts were based upon.

[BobRoberts]

Thanks Matt and Jeff,

In my particular situation, I know the client enough to know that the use was not just for aquiring TM rights.  And actually, there was more than one sales of the type I had mentioned, but thanks for raising the issue in case it was of concern. 

Thanks again.

[JSonnabend]

Jeff-

In regard to your second thought that was our analysis ... it did affect interstate commerce because the sale was across state lines even if the goods were never shipped out of state.

In regard to your first comment, we recently had a case in involving one of our clients who is a national brand of ice cream going up against an upstart ice cream manufacturer in the Pacific Northwest.  The issue of priority of use was hotly contested.  We had national sales as early as ... we'll say 2005 ... but the upstart claimed priority back to late 2004 ... but after discovery it was determined that their claims of sporadic initial sales (one) that crossed state lines between Oregon and Washington was insufficient or token by the TTAB to establish use in commerce as early as 2004 sufficient to defeat our priority of use date in 2005 when the upstart did not begin full production and sale of its product until late 2005.

So that's what my thoughts were based upon.

Matt, I hear you.  But priority of use is a different issue than token use.  A single bone fide technical use is sufficient for registration.  That doesn't mean that a single bone fide use without a corresponding registration is sufficient to establish priority.  I imagine the case you worked on was not about token use at all, but about priority, yes? 

- Jeff