What Proof Do I Need to Register My Trademark?
Whether you are filing a trademark application seeking to register a trademark for the provision of services or the sale of goods, you will need to prove use of the trademark to attain a registration. Depending on whether your application is based on an "already in use" or "intent-to-use" basis, the timing of that proof will vary, but the substantive guidelines on what qualifies as proper proof will be similar. Having a grasp of the various guidelines for appropriately proving use to satisfy the USPTO requirements is an essential step that can maximize the chances of a successful application process. This article will serve as an introduction on this topic, to help understand the ways you can prove use to satisfy USPTO requirements.
Why Proof of Use is Necessary
In the United States, trademark rights are based on first to use in commerce, whereas in many other countries, trademark rights are based on first to file. What that means, is that as soon as you use a trademark in the sale of goods or provision of services, you have a priority right that dates back to that first date of use. You gain what are called "common law" rights as of that first usage in commerce, but if you want to have exclusive rights across the entire United States, you will need to file an application and attain a Federal registration. This is what sets registered trademarks apart from merely theoretical ideas or designs.
Already Using Your Trademark? File a Specimen with Your Application
If your trademark is already in use at the time you file your application, you'll need to include a "specimen" that demonstrates its use. A specimen is a real-world example of how and where your trademark is used in connection with your goods or services.
- For Goods
Acceptable specimens for goods can include product labels, packaging, or photographs of the product itself showing the trademark. For example, if your trademark is on clothing, a photo of the tag or logo on the product would suffice. Likewise a website screenshot demonstrating the ability to buy the item (with the trademark prominent) could suffice.
- For Services
If your trademark is for services, appropriate specimens may include advertisements, brochures, website screenshots, or other materials that clearly show the trademark in relation to the services being offered. These materials must make it clear what services are being provided under the trademark. For example, a business card or screenshot of your website clearly identifying the services and the trademark can suffice.
If the specimen you choose to submit is not accepted by the USPTO, they will issue a non-final refusal via an office action. You will then have 3 months to either provide a substitute specimen (importantly, this substitute needs to have been already in use before or at the time of the original application) or you can convert the application to an intent-to-use basis. Failure to timely address the non-final office action refusal will result in your application being abandoned.
Due to the technicalities and nuances involved, it is best practice to seek out the assistance of an experienced trademark practitioner attorney to represent you before the USPTO. While it is a good idea to do that at the time of the initial application, at the very least you should seek out such help if you encounter a non-final office action refusal based on improper or rejected specimen.
Intent-to-Use Applications and Proving Use Later
If you filed your USPTO application under an "Intent-to-Use" basis, this means you have not yet started using the trademark in commerce. However, you will still need to prove use of the mark at some later point during the registration process—specifically, before the USPTO will grant you a registration. Otherwise, that application won't mature to a registration.
- Before Publication with an Amendment to Allege Use (AAU)
If you begin using the trademark in commerce while your application is still undergoing the initial review (but before it's published for opposition), you can file an Amendment to Allege Use. This form allows you to include your specimen and update your application to show that the mark is now actively in use. You will need to pay an additional filing fee at the time you file your Amendment to Allege Use.
- After Receiving a Notice of Allowance with a Statement of Use (SOU)
If you haven't started using your trademark in commerce until after the USPTO issues a Notice of Allowance, you'll need to submit a Statement of Use along with your specimen. This filing demonstrates that your trademark is now in use and must be submitted within a specified timeframe—typically six months, though extensions can be requested (along with a filing fee for that extension). You will need to pay an additional filing fee at the time you file your Statement of Use.
If you fail to file to timely prove use of your intent-to-use trademark application within the above-specified time periods, your application will be abandoned.
Likewise, if the specimen(s) that you file to prove use are rejected by the USPTO, they will issue an office action. Again, due to the nuances and technicalities involved, it is preferable to employ an experienced trademark practitioner attorney rather than risk the abandonment of your application.
Proving Continued Use for Renewals
The application phase is not the only time that the USPTO will require a trademark owner to prove that they are actively using the trademark in commerce. A specimen will be required, along with a sworn declaration of continued use, when you file a Section 8 declaration (6 years) and/or when you file a Section 8 and Section 9 renewal (10 years). The parameters for what is an acceptable specimen of use are the same as at the application phase.
There is an option to claim excusable non-use, but that is a risky proposition that is subject to very strict limitations. Accordingly, whether you are filing a Section 8, Section 8 and 9, or claiming excusable non-use it is a very good idea to consult with an experienced trademark practitioner attorney to maximize the chances of a successful filing.
Common Mistakes as to Specimens
There are some common errors to be aware of and to avoid. Here are some common mistakes that will lead to your specimen likely being rejected:
- Filing a specimen that does not match identically to the drawing on the application
- Filing a specimen that is a mock-up or "fake" specimen
- Filing a specimen that does not match use of the trademark on the stated goods/services in the application
- Using a screenshot of a website without recording the date taken, and the URL of the website
- Providing an unclear photo
- Failing to provide any specimen of use
Keeping these in mind and avoiding such errors can assist you to avoid problems with the application (or renewal). Again, an experience trademark attorney will help ensure that you avoid these, and other lesser known errors.
Final Thoughts
Hopefully this article has helped you understand some of the basics as to proving use of your trademark to satisfy USPTO requirements. As you have seen, the USPTO application process can be very strict, technical, and fraught with problems that could arise if you do not follow the rules on submission of specimens. Proving use of your trademark is a critical step in achieving federal registration with the USPTO. Whether your mark is already in use or you're filing an Intent-to-Use application, submitting the right specimen at the appropriate stage is key to moving the process forward.
If you are in doubt on whether you can prove adequately that your trademark is being used in commerce, it is a good idea to seek out an attorney before doing something on your own that may have negative consequences for your chances of a successful trademark registration.
If you are ready to take the next step, and would like to consult with an experienced trademark practitioner attorney, our office can assist you with a free initial consultation. The assistance of an attorney can help streamline the process, and avoid common mistakes, thus maximizing the chances of a successful Federal trademark registration. Contact us today to learn how we can help you successfully register your trademark and safeguard your business!
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