What is use in commerce? Why can’t I just register a company name and then license it? Unlike other intellectual property, trademarks are “rights appurtenant”–a fancy way of describing a right that requires some other condition in order to exist. In this case, that condition is the use of the mark in commerce. But why?
The answer lies in what sort of economic activity the law seeks to favor. A compromise between the government and the public at large rests at the foundation of other types of intellectual property, such as copyrights or utility patents. In the case of utility patents, for instance, the government protects a limited monopoly over inventions that advance knowledge and know-how. U.S. law similarly grants limited monopolies to authors for their creative contributions in original works. These protections create additional financial incentives for inventors to invent, painters to paint, writers to write, and so on, by allowing them to solely profit off their work for a limited time.
By contrast, trade names, slogans, logos, and the like, don’t advance the world’s body of knowledge. And, while they can be humorous, pithy, or creative (think: the California Milk Producers Advisory Board’s “Milk, it does a body good!” or the totally original–even concocted–“Kodak” trade name) it would be hard to call any of these original works of authorship. Game of Thrones they ain’t. that enhance our lives. Instead, the government’s interest in protecting trademarks is about preventing confusion in the marketplace–i.e., combating counterfeits and false advertising–and establishing a basic rules of fair play among competitors.
As businesses proliferate, more and more names, words, and symbols would be restricted if there weren’t some boundaries to when one can own a trademark. When we consider that companies can live theoretically infinite lives, the problem only deepens. The principal boundary that the law imposes on this monopoly is therefore to require mark owners to use their marks in the marketplace.
As a result, part of every trademark application before the USPTO requires demonstration of use of the proposed mark in commerce.