Trademark use in interstate commerce is required to create a basis upon which a federal trademark registration may issue. This requirement naturally raises two questions. First, what use qualifies as trademark use? Second, how much trademark use in interstate commerce is enough?
With respect to the first question, the use of the trademark must be a bona fide use in the ordinary course of trade rather than made merely to reserve a right in the mark. Whether the use was bona fide will depend on the industry. For example, testing or selling samples in one industry such as the software industry is sufficient to satisfy the bona fide use requirement because it is ordinary to engage in beta testing before launching into full commercial-scale production. But selling samples of a t-shirt is not ordinary for the clothing industry before launching into full commercial-scale production. In the case of selling samples in the clothing context, you are much more likely to not satisfy the bona fide trademark use requirement.
Assuming the use qualifies as trademark use, then the focus turns to how much trademark use in interstate commerce is enough. In other words, was the trademark use merely token use. Recently, the Trademark Trial and Appeal Board had the opportunity to address this issue in the Mombacho Cigars S.A. v. Tropical Tobacco, Inc. case.
Mombacho Cigars petitioned to cancel Tropical Tobacco’s registration for the MOMBACHO mark in connection with “cigars.” Mombacho Cigars that Tropical Tobacco had made nominal use of the MOMBACHO mark for five years – two years longer than the presumptive abandonment period of three years. Tropical Tobacco admitted that it did not market the MOMBACHO brand, but maintained that it continuously sold the cigar from its date of first use to the present even though sales dwindled between 2010 to 2015. In 2012 to 2014, Tropical Tobacco sold between two to four boxes of cigars to one distributor. But in 2015, the sales increased to 24 boxes and then a 300 box order all by the same distributor.
The Board found that while low, this pattern of sale activity was sufficient to establish trademark rights and avoid an abandonment claim.