Trademarks For Your Online Business: Are You Conducting Interstate Commerce?

By: Skylar Shafer

Under the Lanham Act, to register a trademark and receive protection under federal law, a mark must be used in or actively affect interstate commerce.[1] For traditional cases of physical commerce, the interstate commerce test has been refined over centuries.[2] This interstate component as a means of getting access to federal loss is not new, and is instead based on the Commerce Clause.[3] But what about when that commerce is over the internet? How do we determine if it is interstate commerce? How can a business-owner know if they can register their trademark or not? Let’s get into it.

Let’s start by looking at the interstate commerce test for traditional commerce and look at how it fits into federal trademark registration. A mark must be used in bona fide commercial use rather than token use.[4] Bona fide use means that there must be a sincere and good-faith plan to use the mark in commerce, as opposed to displaying it solely for the purpose of trademark registration.[5] This includes activities with substantial effects on interstate commerce, even if the activity is not directly interstate by itself.[6] The standard to indicate use for trademark registration is different for goods versus services.[7] For goods, the product must be placed on the goods, their containers, the associated displays, tags or labels of the product, and then the goods must be sold or transported in commerce.[8] Comparatively, a service is associated with a mark when the mark is used in the rendering of the services in commerce.[9]

In practice, federal courts require a minimal connection to interstate commerce to receive federal trademark protection.[10] This includes business advertising in media that reaches non-state residents.[11] Under this guidance, internet usage satisfies the jurisdictional requirement for federal protection, but it does not establish that every use of a mark on the internet is in connection with goods and services, as is needed.[12]

When you are attempting to register a trademark you need to submit a specimen, a piece of evidence basically proving that you are using the trademark in association with a good or service.[13] In the case of an online store and a trademark of a good, this encompasses showing the mark being associated with that good via a display associated with the good, likely at the point of sale.[14] If you were unable to provide this evidence of the trademark being used with the good at the point of sale, you would be unable to practically complete trademark registration. This is in line with the bona fide sale requirement we outlined earlier. Reserving a domain name is not sufficient to qualify to show commercial usage, as in this case or in that of services, there must be genuine proof of an engagement in commerce.[15] In the case of a trademark associated with a service, the same bona fide commercial use requirement is there, only the rules on providing a specimen change, and you need only to use the mark in conjunction with the rendering of the service or advertising, as opposed to selling something directly like you are with a good, so the bar is lower.[16]

Our initial question was whether the online sale of goods or services inherently counted as interstate commerce for the sake of trademark registration. The answer is that it is almost always interstate commerce, as long as you are really trying to sell to customers online, and using the mark in close proximity to the good or service.

 

 

Link to Image Source: https://www.faier.com/wp-content/uploads/2016/11/Faier-Trademark.jpg

[1] Thompson Tank & Mfg. Co. v. Thompson, 693 F.2d 991 (9th Cir. 1982).

[2] Gibbons v. Ogden, 22 U.S. 1 (1824); United States v. Lopez, 514 U.S. 549, 115 S. Ct. 1624 (1995).

[3] Gibbons, 22 U.S. 1 (1824); U.S. Const. art. 1, § 8, cl. 3.

[4] Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir. 2001).

[5] 15 U.S.C. § 1051(b)(1).

[6] Scott Fetzer Co. v. Gehring, 288 F. Supp. 2d 696, 704 (E.D. Pa. 2003).

[7] U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure § 901,1301.03 (May 2025).

[8] Id. at § 901.01.

[9] Id. at § 1301.03(b).

[10] Berghoff Rest. Co. v. Lewis W. Berghoff, Inc., 357 F. Supp. 127, 130 (N.D. Ill. 1973).

[11] Id. at 130.

[12] Utah Lighthouse Ministry v. Found. for Apologetic Info. & Rsch., 527 F.3d 1045, 1050 (10th Cir. 2008).

[13] 15 U.S.C. § 1051(a).

[14] TMEP § 904.03(i,g).

[15] 555-1212.com, Inc. v. Commc’n House Int’l, Inc., 157 F. Supp. 2d 1084, 1092 (N.D. Cal. 2001).

[16] TMEP § 1301.04.