15 U.S.C. § 1127: Definitions of Marks, Use in Commerce, and Abandonment

Section 45 of the Lanham Act, codified at 15 U.S.C. § 1127, is the definitions section that the rest of federal trademark law runs on. The 15 U.S.C. 1127 definitions decide what counts as a mark, what “use in commerce” actually requires, when a mark is treated as abandoned, and who qualifies as a “person” able to own one. If you are filing an application, licensing a mark, or defending one against a cancellation petition, the outcome usually turns on language pulled straight from this section.

The Four Kinds of Marks

Section 1127 recognizes four categories, and the one your mark falls into shapes both how you register and what the registration protects.

A trademark is any word, name, symbol, device, or combination used to identify and distinguish one person’s goods from those made or sold by others. The definition also reaches marks a person has a genuine intention to use in commerce, not only marks already in use.¹

A service mark works the same way but identifies services rather than physical goods. Section 1127 specifically notes that titles, character names, and other distinctive features of radio or television programs can qualify as service marks, even where the program advertises the sponsor’s goods.¹

A certification mark is used by someone other than the owner to certify a characteristic of the goods or services: regional origin, materials, mode of manufacture, quality, accuracy, or that the work was performed by members of a particular union or organization. The owner sets the standards; third parties who meet them display the mark.¹

A collective mark is a trademark or service mark used by the members of a cooperative, association, or other collective group, and it includes marks indicating membership in a union or association. The line between collective and certification marks is who uses them: members themselves for a collective mark, outside parties meeting the owner’s standards for a certification mark.¹

Trade Names Sit Outside the Register

Section 1127 defines a “trade name” or “commercial name” as any name a person uses to identify a business or vocation. Trade names, as such, cannot be federally registered. Your business’s legal name is a trade name. It only becomes registrable once you use it as a trademark or service mark to identify specific goods or services in commerce, not merely to name the entity behind them.¹

What “Commerce” Covers

“Commerce” in Section 1127 means all commerce that Congress may lawfully regulate. In practice that is interstate commerce, commerce with foreign nations, and commerce within U.S. territories. If your activity has no interstate or foreign dimension, federal registration may be out of reach even though state trademark law can still apply.¹

What “Use in Commerce” Requires

Section 1127 defines “use in commerce” as the bona fide use of a mark in the ordinary course of trade, not use made merely to reserve a right in a mark. Before the Trademark Law Revision Act of 1988, a single token shipment could satisfy the use requirement; that changed, and today the use has to reflect real business activity.¹

Use With Goods

For goods, two things have to be true. The mark must be placed on the goods, their containers, associated displays, tags, or labels, or, where the nature of the goods makes that impracticable, on documents associated with the goods or their sale. And the goods must be sold or transported in commerce.²

Use With Services

For services, the mark has to be used or displayed in the sale or advertising of the services, and the services themselves must be rendered in commerce. The definition also reaches services rendered in more than one state, or in the United States and a foreign country, where the provider is engaged in commerce in connection with those services.²

Intent to Use

The trademark and service mark definitions both cover marks that a person has a “bona fide intention to use in commerce.” That phrase is the statutory hook for intent-to-use applications: you can file, and secure a priority date, before your product or service is on the market. Actual registration still waits on a statement of use showing real commercial activity within the required window.¹³

Who Qualifies as a “Person”

The section defines “person” broadly. It covers natural persons and any “juristic person,” meaning firms, corporations, unions, associations, and other organizations capable of suing and being sued. It also explicitly includes the United States, federal agencies, state governments, state agencies, and state officers acting in their official capacity. All are subject to the Lanham Act on the same footing as a private business.¹

Applicants, Registrants, and Related Companies

An “applicant” is the person or entity that has filed an application; a “registrant” is the person holding a federal registration, together with their legal representatives, predecessors, and successors in interest.¹

The “related company” definition is the one that matters most day to day. A related company is any person whose use of the mark is controlled by the owner with respect to the nature and quality of the goods or services on which the mark is used. That control requirement is what makes licensing work. When the owner keeps genuine quality control over how a licensee uses the mark, the licensee’s use flows back to the owner and supports the registration. Let the control lapse, and the arrangement can be attacked as naked licensing, with abandonment as the consequence.¹

When a Mark Is Abandoned

Section 1127 sets out two ways a mark is abandoned, and either wipes out rights.

Nonuse

A mark is abandoned when use has been discontinued with no intent to resume. Intent may be inferred from the circumstances, and three consecutive years of nonuse is prima facie evidence of abandonment. Once that presumption attaches, the owner has to come forward with proof of a real intent to resume use; general plans rarely carry that burden.¹

Genericism

A mark is also abandoned when, through the owner’s acts or omissions, it becomes the generic name for the goods or services. Failing to police unauthorized use, or letting the mark drift into use as the ordinary noun for a product category, can produce that result. Consumer motivation for buying the product is not the test for whether a mark has become generic.¹

1
Office of the Law Revision Counsel. 15 USC 1127 – Construction and Definitions; Intent of Chapter
2
Office of the Law Revision Counsel. 15 US Code 1127 – Construction and Definitions; Intent of Chapter
3
United States Patent and Trademark Office. Trademark Applications – Intent-to-Use (ITU) Basis