So you ran a Kickstarter campaign for your new product, it was successfully funded, and the goods are in production. Do you have enough “use in commerce” to satisfy the United States Patent and Trademark Office’s trademark application requirements?
Crowdfunding campaigns have become an established part of the marketing landscape. Entrepreneurs often use channels like Kickstarter to launch a new product. More sophisticated and far-sighted entrepreneurs have seen this as an opportunity not just to fund production of a product, but to establish a brand that can live on beyond the initial product offering. Regular readers of this blog know that securing trademark protection for a new brand is an essential step.
A Bit of Background – In-Use vs. Intent-to-Use
Most U.S. trademark applications are filed on one of two bases: In-Use or Intent-to-Use. To submit an In-Use filing the mark must have been used in interstate commerce. This is per Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).
The simplest way to understand this is that the goods must have been sold to a purchaser in another state.
If you don’t meet that qualification, but you have a bona fide intent to use the mark in commerce, you can file on an Intent-to-Use basis instead. An Intent-to-Use filing essentially reserves the trademark until you can show use in interstate commerce.
There are a few minor downsides to an Intent-to-Use filing. The process takes a bit longer, and the USPTO charges an additional filing fee for the “Statement of Use” – the filing that is required to show use in interstate commerce. This filing must be submitted before the USPTO will issue the trademark registration.
Let’s Get to the Question
So, given all that background, our question today is: if you’ve run your Kickstarter campaign and people from multiple states have pre-purchased the product, but the product hasn’t been manufactured or shipped yet, can you file on an In-Use basis?
To start, I want to establish that a screen shot of a website (such as a Kickstarter page) can be a Specimen of Use. The Trademark Manual of Examining Procedure (TMEP) Section 904.03 states (say it with me, folks):
A web page that displays a product can constitute a “display associated with the goods” if it:
(1) contains a picture or textual description of the identified goods;
(2) shows the mark in association with the goods; and
(3) provides a means for ordering the identified goods.
In our Kickstarter example, let’s assume #1 and #2 are satisfied. How about #3? Does the fact that there’s a delay between the order being placed and the goods being manufactured mean the Kickstarter page is not a “means for ordering the goods”?
The problem is that a Kickstarter campaign of this type is essentially a pre-sale. Section 45 of the Trademark Act, 15 U.S.C. §1127 states, in part, that “use in commerce” occurs when “the goods are sold or transported in commerce.”
TMEP Section 904 clarifies that the USPTO “must refuse registration if the specimen indicates that the goods have not been ‘sold or transported in commerce.’…For example, a webpage for placing pre-sale orders for goods that are not yet available does not show use of the mark in commerce in connection with the goods, even if it otherwise meets the requirements for an acceptable display associated with the goods.”
I understand that, contrary to what’s been stated above, the USPTO has, from time to time, allowed these kinds of Kickstarter pages as Specimens of Use. However, these may just have been errors on the part of the USPTO, and I wouldn’t rely on the same thing happening in the future. Additionally, if those registrations were legally challenged, the specimens of use might not hold up to scrutiny.
So the smart, safe move is to apply on an Intent-to-Use basis, even if it takes a bit longer and requires an additional filing fee.