# Larry Harmon Pictures v. Williams Restaurant: One Barbecue Joint Is Enough for Use in Commerce

> The Federal Circuit held a single Tennessee restaurant serving interstate travelers satisfies the Lanham Act's use in commerce requirement for registration.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/larry-harmon-v-williams-single-location-commerce/


Federal trademark law protects marks used "in commerce," and for decades a nagging question sat under that phrase: how much interstate activity does a purely local service business need before it can claim a federal registration? In *Larry Harmon Pictures Corp. v. Williams Restaurant Corp.*, 929 F.2d 662 (Fed. Cir. 1991), decided March 27, 1991, the United States Court of Appeals for the Federal Circuit answered with a rule of striking simplicity. A single-location barbecue restaurant in Mason, Tennessee that serves interstate travelers renders its services "in commerce" within the meaning of the Lanham Act, and no court or examining attorney may graft a higher threshold onto the statute.

The case is memorable for its cast. The applicant ran Bozo's Hot Pit Bar-B-Q, a west Tennessee institution operating under the BOZO'S name since 1932. The opposer was Larry Harmon Pictures Corporation, the company behind Bozo the Clown. But the doctrine the case produced has nothing to do with clowns and everything to do with the constitutional sweep of the Lanham Act's definition of commerce. Thirty-five years later, *Larry Harmon* remains the standard citation, embedded in the USPTO's Trademark Manual of Examining Procedure, for the proposition that one local establishment with out-of-state customers is enough.

## At a glance

- **Case:** *Larry Harmon Pictures Corp. v. Williams Restaurant Corp.*, 929 F.2d 662 (Fed. Cir. 1991)
- **Decided:** March 27, 1991; panel of Judges Markey, Newman, and Archer; opinion by Judge Archer; Judge Newman dissenting
- **Posture:** Appeal from the Trademark Trial and Appeal Board's grant of summary judgment (January 13, 1989) dismissing Harmon's opposition to Williams' application to register BOZO'S for restaurant services
- **Holding:** Use of a service mark in connection with services rendered to customers traveling across state boundaries satisfies the Lanham Act's use in commerce requirement; services need not be rendered in more than one state.
- **Significance:** Final; affirmed. The decision governs USPTO examination today and is cited in TMEP § 901.03 for single-location businesses serving interstate customers.

## The statutory frame: "commerce" means everything Congress can reach

Two provisions of the Lanham Act frame the dispute. Section 3, 15 U.S.C. § 1053, provides that "service marks shall be registrable, in the same manner and with the same effect as are trade-marks," which carries over the rule in Section 1, 15 U.S.C. § 1051, that the "owner of a trade-mark used in commerce may apply to register his trademark." As the court put it, service marks must in general be "used in commerce" before they may be registered. Section 45, 15 U.S.C. § 1127, then defines "commerce" with deliberate breadth: "all commerce which may lawfully be regulated by Congress." That definition ties the registration system directly to the Commerce Clause, and by 1991 the Supreme Court had long since confirmed that Congress's commerce power reaches local restaurants that serve interstate travelers or draw on interstate supplies.

The Court of Customs and Patent Appeals, the Federal Circuit's predecessor, had already worked out the trademark implications of that breadth. In *In re Gastown, Inc.*, 326 F.2d 780 (C.C.P.A. 1964), the court held that automotive service stations located entirely within Ohio rendered services "in commerce" because the services were available to customers traveling interstate on federal highways. The intuition is straightforward. If the customer crosses a state line to receive the service, the transaction is interstate commerce even though the provider never leaves home. What *Gastown* established for gas stations, *Larry Harmon* would cement for restaurants, and by extension for every single-location service business.

The competing view, pressed by Harmon, was that this reading collapses the statutory requirement into nothing. If a trickle of out-of-state patrons federalizes a local diner's mark, then virtually every service business in America can register, and the phrase "use in commerce" does no gatekeeping work at all. Harmon accordingly urged the court to require something more before a single-location restaurant could register: a meaningful quantum of interstate activity, not incidental border-crossing customers.

## Bozo's of Mason, Tennessee: the facts and the fight

Williams Restaurant Corporation operated Bozo's Hot Pit Bar-B-Q in Mason, Tennessee, a small town roughly an hour's drive from Memphis. The restaurant had traded continuously under the BOZO'S name since 1932, long before Bozo the Clown existed, and had built a reputation that pulled diners from Memphis and from across the nearby state lines of Arkansas and Mississippi. When Williams applied to register BOZO'S for restaurant services, Larry Harmon Pictures Corporation, owner of marks associated with the Bozo the Clown character, opposed.

Before the Trademark Trial and Appeal Board, the use in commerce record was one-sided. Williams submitted affidavits and guest registers documenting that a substantial share of its business, on the order of fifteen percent, came from out-of-state patrons. Harmon's countervailing evidence amounted to an investigator's report that no out-of-state customers were observed during a single visit. The Board found no genuine dispute that BOZO'S restaurant services were rendered to interstate travelers, granted summary judgment for Williams, and dismissed the opposition on January 13, 1989. Harmon appealed to the Federal Circuit, arguing that section 3's use in commerce requirement cannot be satisfied by a one-location restaurant serving only a minimal number of interstate travelers.

## The Federal Circuit's reasoning: no hidden thresholds in the statute

Judge Archer's opinion for the majority affirmed, and its logic tracks the statutory text with little detour. Congress defined commerce as all commerce it may lawfully regulate. Serving meals to customers who travel across state boundaries is commerce Congress may lawfully regulate. Therefore services rendered to interstate travelers are rendered "in commerce," and nothing in the Act requires that the services themselves be rendered in more than one state.

The court then turned to the limits Harmon asked it to impose, and this is where the opinion earns its citations. Harmon proposed objective markers that would separate "real" interstate restaurants from merely local ones: location on an interstate highway, evidence that at least half the meals served went to interstate travelers, or regular advertising in out-of-state media. The Federal Circuit rejected all of them as non-statutory limitations that no tribunal is free to add. Congress chose a constitutional definition of commerce; the USPTO and the courts must take it as written. Nor would the court adopt a de minimis exception under which some quantum of interstate custom is too small to count. On this record, where undisputed evidence showed interstate patrons receiving the services, the requirement was met.

The majority also disposed of the procedural objection. Summary judgment was proper because Harmon's single-visit observation could not create a genuine dispute against Williams' affidavits and registers. An opposer cannot force a trial by pointing to the thinness of its own contrary evidence.

## Judge Newman's dissent and the federalism undercurrent

Judge Pauline Newman dissented, and her opinion preserves the road not taken. She would have reversed the grant of summary judgment and remanded for development of an adequate evidentiary record and application of the correct law to found facts. Her concern ran on two tracks. Procedurally, she viewed the extent and character of the restaurant's interstate commerce as a disputed material fact unsuited to summary disposition. Substantively, she worried that the majority's reading lowered the interstate commerce threshold so far that federal registration would sweep in predominantly local activity, crowding the space that state and common-law trademark systems were designed to occupy.

The dissent's federalism instinct was not idle. The Lanham Act coexists with state registration systems and common-law rights precisely because some commerce was assumed to be beyond, or beneath, the federal statute. *Larry Harmon* narrows that residual category almost to a vanishing point for service businesses. The majority's answer is that the narrowing was Congress's doing, accomplished the moment it pegged "commerce" to the full commerce power, and that policing the outer limits of that power is not the job of trademark tribunals.

## What the decision changed in practice

*Larry Harmon* migrated quickly from case law to examination practice. TMEP § 901.03 today cites the decision for the rule that a mark used to identify restaurant services at a single location qualifies as use in commerce where the services are rendered to interstate travelers, alongside *In re Gastown*'s highway-services holding. Examining attorneys do not demand multi-state operations, interstate advertising budgets, or customer-origin percentages from service-mark applicants, and oppositions built on the theory that a local business is "too local" to register almost never succeed.

The decision's gravitational pull extends beyond restaurants. Hotels, repair shops, medical practices, salons, and, in the internet era, websites serving out-of-state users all rest their federal registrations on the same logic: the commerce requirement is jurisdictional, keyed to the Commerce Clause, and satisfied by real transactions with customers who cross state lines. What remains essential after *Larry Harmon* is proof, not volume. The applicant still must show that interstate customers actually receive the services; Williams prevailed on affidavits and guest registers, not on assertion.

## Open questions

- **Is there any floor at all?** The court rejected the proposed thresholds on this record but did not hold that a single interstate customer always suffices. Whether truly trivial or contrived interstate contacts could fail the statute remains untested at the appellate level.
- **How does the rule map onto purely intrastate sales of goods?** *Larry Harmon* is a services case built on traveling customers. Goods sold only within one state present a different evidentiary picture, and applicants there typically rely on shipments across state lines or effects on interstate commerce.
- **Does the modern Commerce Clause debate matter?** Because § 1127 incorporates whatever Congress may regulate, shifts in Commerce Clause doctrine could in principle move the trademark line, though no post-1991 decision has retrenched it.

## Implications for brands and businesses

- **A single location can support a federal registration.** A local restaurant, shop, or practice that genuinely serves out-of-state customers satisfies the use in commerce requirement; there is no multi-state operations test and no minimum percentage of interstate business.
- **Document the interstate customers before you file.** Guest registers, reservation records, affidavits from staff, and customer-origin data carried the day for Williams. Applicants and litigants should build this record contemporaneously rather than reconstruct it under fire.
- **Do not oppose on "too local" grounds without hard evidence.** Harmon's one-visit investigation was worthless against documented interstate patronage. An opposer challenging use in commerce needs proof that interstate transactions do not occur, which is a difficult negative to establish.
- **Remember what registration does not decide.** Clearing the commerce threshold says nothing about priority or confusion. Williams won the right to register a mark it had used since 1932; disputes with senior or famous mark owners are fought on other ground.

## Frequently asked questions

**Does a business need locations in more than one state to register a federal trademark?** No. Larry Harmon confirms that services rendered at a single location can satisfy the Lanham Act's use in commerce requirement, so long as the services are rendered in a commerce Congress can regulate, such as serving customers who travel across state lines.

**What evidence shows use in commerce for a single-location service business?** Concrete proof that out-of-state customers actually receive the services: guest registers showing visitor origins, affidavits from personnel who deal with customers, and records reflecting the share of business from interstate patrons. Williams supported its application with exactly this kind of evidence.

**Did the decision give the restaurant rights against Bozo the Clown?** Not directly. The appeal decided only the registrability question raised in Harmon's opposition: whether Williams' use was use in commerce. Questions of confusion between the restaurant's BOZO'S mark and Harmon's clown-related marks were not before the Federal Circuit.

## Authorities and sources

- [*Larry Harmon Pictures Corp. v. Williams Restaurant Corp.*, 929 F.2d 662 (Fed. Cir. 1991) (full opinion and dissent, Caselaw Access Project)](https://static.case.law/f2d/929/html/0662-01.html)
- [Lanham Act § 45, 15 U.S.C. § 1127 (definition of "commerce") (Cornell LII)](https://www.law.cornell.edu/uscode/text/15/1127)
- [Lanham Act § 3, 15 U.S.C. § 1053 (service marks registrable) (Cornell LII)](https://www.law.cornell.edu/uscode/text/15/1053)
- [TMEP § 901.03, Commerce That May Be Lawfully Regulated by Congress (BitLaw)](https://www.bitlaw.com/source/tmep/901_03.html)
- [Studicata, Larry Harmon Pictures v. Williams Restaurant case brief](https://studicata.com/case-briefs/case/larry-harmon-pictures-v-williams-restaurant/)
- [*In re Gastown, Inc.*, 326 F.2d 780 (C.C.P.A. 1964), as discussed in TMEP § 901.03](https://www.bitlaw.com/source/tmep/901_03.html)