T.M.E.P. § 901.03
Commerce That May Be Lawfully Regulated By Congress
Executive summary:
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901.03 Commerce That May Be Lawfully Regulated By Congress
The scope of federal trademark jurisdiction is commerce that may be regulated by the United States Congress. Types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.
"Territorial commerce" is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, the United States Virgin Islands) or between the United States and a territory of the United States.
A purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. See Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), cert. denied 502 U.S. 823 (1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in "use in commerce"); In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (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) (automotive service station located in one state was rendering services "in commerce" because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020, 1022 (TTAB 1984) (billiard parlor services satisfy the "use in commerce" requirements, where the record showed that applicant's billiard parlor services were advertised in both Kansas and New York"); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Department Stores, Inc., 137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).
Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. See Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (Table), cert. denied, 525 U.S. 834 (1998).
In some cases, services such as restaurant and hotel services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause. See In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968); In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967).
Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States. Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2nd Cir. 1998); Mother's Restaurants Inc. v. Mother's Bakery, Inc., 498 F. Supp. 847, 210 USPQ 207 (W.D.N.Y. 1980); Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998).