Is Kickstarter a use in commerce for a trademark application? | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Is Kickstarter a use in commerce for a trademark application?

Often a new inventor will ask me about raising funds to get their idea off the ground and sometimes I have them look at Kickstarter. If things go well, it’s a great way of generating some buzz and raising money to get a product into production.

I’ve picked up some pretty cool stuff from Kickstarter… a few packs of Cthulhu playing cards, a vegan cookbook, a multi-charging station that one of the kids smashed, and I’ve tried funding a few things that fizzled out. It’s fun. Take a look at it.

If you want to use Kickstarter to raise money for an invention, you’ll want to talk to a patent attorney first to make sure you don’t endanger your patent rights. Certain public disclosures and come back to haunt you if you’re not prepared.

More commonly though, at least for me, is when someone is getting ready to launch a campaign and want to protect the name of their product with a trademark.

In order to get a federal trademark you have to be using the mark in connection with your product “in commerce.” That means that the mark isn’t just in use, but it’s been used in such a way that crosses state-lines. You see, that action is needed to bring it under control of the federal government through the Constitution’s Commerce Clause. According to the statute, a mark on goods are “in commerce” when:

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce,

The first part, using with the product is easy to understand. If your product is a spiral cutter to make your own curly fries and zoodles (zucchini noodles) at home, and your product name is Quirky Curlies, then slapping the name on the box or the cutter is a proper use. If you don’t have the product ready, so you print the name on t-shirts to try to secure rights to the name, that’s probably not going to cut it.

The second part is a little trickier. Something is sold when an order is placed and presumably paid. Something is transported in commerce when it crosses state-lines. For Kickstarter then, is a pledge a sale, or is it not a sale until the project is fully funded, or if it’s not a sale, does shipping the product across state-lines qualify as a “use in commerce?”

It would probably depend on the specific facts. Some projects are really there to raise the money needed to prototype and get a product made. Others use Kickstarter as more of a sales outlet. If a product is ready to ship, then pledging might be a sale since it’s essentially a done deal, although even then the seller could back out if the project doesn’t get fully funded. I think it’s clear that a product paid for thought Kickstarter and sent across state-lines would satisfy the requirements, but by that time the seller could have someone else copy their product name, and maybe even beat them to registration.

The solution to the problem doesn’t rely on tricks or clever arguments, but is simply to file an “intent to use” application. In that, you lay claim to a trademark even though you’re not using it yet. Essentially, it buys you some time to get the necessary sales accomplished. Then, when the product is shipping and we get a tentative allowance from the trademark examiner, we update the file, the mark issues, and Quirky Curlies becomes a beloved brand name and future sponsor of a college bowl game and I get free tickets for life as your cherished trademark counsel!