Often, it is desirable for a company to maintain the registered status of marks acquired from merged or purchased businesses in order to prevent unauthorized use by third parties. However, U.S. law requires that a trademark must be “used in commerce” in order to acquire or maintain registration. Such use is defined, in part, as “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” This requirement sometimes can complicate efforts to protect marks in which a company may have little interest using actively on an ongoing basis.

However, U.S. law also recognizes that “use in the ordinary course of trade” varies from one industry to another and that “use in commerce” should be interpreted to include less traditional trademark uses. The legislative history pertaining to the statutory “bona fide use” language indicates that “use in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval” are among the types of “non-traditional” uses that remain within the scope of the use-in-commerce requirement.

Therefore, it may be possible to maintain use of the marks by associating them with non-core operations or lines of business, provided that such uses are within the scope of the goods and services descriptions pertaining to the trademark registrations. In unique situations, it may be necessary to seek new registrations in-line with intended uses for acquired marks, a process which likely would be facilitated by the company’s ownership of the existing marks. Where this situation arises, a company’s marketing team should work closely with knowledgeable trademark counsel to determine whether there may be solutions that minimize the impact of the use-in-commerce requirement on company business plans.