Actual use of a trademark occurs when you use your trademark in connection with your goods or services.
But there are some caveats and conditions that must be met in order for your mark to qualify as “actual use”.
From U.S. Trademark Law 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.”
This means that you must be conducting business using this name, not merely making a sale or offering a service in order to reserve your naming rights.
In order to make trademark “use” on goods, you must meet the following two criteria:
- Your mark must appear on the goods themselves, their tags or labels, on their containers, or in certain cases on the displays associated with the goods, AND
- the goods are sold or transported in commerce.
In order to satisfy use requirements for services, the mark must either:
- be used or displayed in the sale or advertising of the services and the services are rendered in commerce, OR
- the services are rendered in more than one state or in the US and a foreign country.
Examples of activities qualifying as “use” on goods or services:
Use on a website: If you are selling or offering goods for sale, your site could qualify for use as an "online retail store." If your mark is used to identify goods or services, the goods or services are displayed on the site, and there is a way to buy the goods or services, this could qualify as "use."
Even if you're not explicitly offering goods or services for sale, your website might qualify for use:
If you offer services such as consulting on your website, you are likely making use of your mark.
If you are a nonprofit organization. This may be considered ‘use’ to identify the services of education or fundraising for charitable purposes.
If you provide reviews, like restaurant reviews, your name on the website could be ‘use’ for services of providing restaurant reviews and/or database information about restaurants.
- Placement of the Mark affixed to goods or their containers.
- Distribution of goods to the ultimate consumers free of charge (ex: placing the mark on a restaurant menu that is given to a take-out customer at no additional charge, could be used for menu items if you have a sandwich name like THE BIG GORILLA on the menu).
- Rights can be acquired by leasing, rather than selling a trademarked product. (ex: leasing a car or lawnmower)
- An offer to perform a service can suffice, even before it has been accepted. (ex: If you’re a web designer, using your mark on a proposal for a job or project is satisfactory, even if the client does not hire you.)
- Similarly, placing the mark on a working prototype of a product that you use for the purpose of attracting customers may constitute “use” of your trademark. This could be a functional beta site or minimum viable product where your goods or services can be bought and sold.
- For pharmaceuticals, pre-clinical and clinical trials qualify as commercial use for the purpose of acquiring rights in a mark.
Examples of activities that DO NOT QUALIFY as “use” on goods or services:
- Registration of a domain name (Neither is having a landing page for a ‘parked’ that domain, or a "coming soon" page. Domain names constitute use only when the website sells or offers actual goods or services. You must be actually doing business on or through your website.)
- Using the company name on social media
- Incorporation with a State
- Filing a “d/b/a” with the state
- Coming up with a business plan (whether it is public or private)