Use in commerce

Use of another's same or similar trademark in a domain name can subject the domain name owner to liability for federal trademark infringement or dilution under the Lanham Act depending on the content of the corresponding website.  There is no liability, however, unless the domain name owner has "used" another's trademark "in commerce."  This entry discusses some "use in commerce" issues that have arisen in the context of using a third party's mark in a domain name.

Trademark infringement occurs when the defendant uses in commerce another's mark, without consent, in connection with the sale, offering for sale, distribution or advertising of any good or service, where such use of the mark is likely to cause confusion, mistake or deception.

The term use in commerce refers to the bona fide use of a trademark or service mark in either interstate or foreign commerce in the ordinary course of trade. The Lanham Act (U.S. trademark law) provides that:

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.”

For goods, the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

Nominal use made merely to reserve a right in a mark does not qualify. Use of the mark in advertising or promotional materials before the product or service is actually provided under the mark is also not "use in commerce." And, mere registration of a domain name is not considered a use in commerce.