“Use in commerce” under trademark law requires sale or transport of goods; mere press releases not enough, says Eighth Circuit

IP attorneys recognize that “use in commerce” is an critical aspect of trademark law.  In order to obtain federal trademark registration, 15 U.S.C. 1051 states that the registrant must demonstrate use of the mark in commerce.  In addition, to impose liability for infringement the plaintiff must show that the infringer is using mark in commerce in an infringing manner.

The U.S. Court of Appeals for the 8th Circuit recently ruled that use of a trademark in press releases, industry statements and presentations was not sufficient to establish “use in commerce” under the Lanham Act.  

In Sensient Technologies Corp v SensoryEffects Flavor Co. (No. 09-2686, 7/21/2010), both the plaintiff and the defendant sold flavor delivery systems to food and beverage suppliers.  The defendant, as part of a rebranding initiative, used the mark “SensoryFlavors” in a press release announcing a corporate acquisition.  It also used the “SensoryFlavors” mark in letters to various contacts in the food industry, as well as in two customer presentations.  The plaintiff sued, contending (among other things) that the “SensoryFlavors” mark infringed the plaintiff’s “Sensient Flavors” trade name.

The district court issued a preliminary injunction against the defendant’s use of the mark, but granted summary judgment in favor of the defendant and dismissed the remainder of the case because defendant had no “use in commerce” of the mark.  The Eighth Circuit affirmed, stating that plantiff had “fail[ed] to show evidence of any sale or transport of goods bearing the SensoryFlavors mark.”