US Trademark use requirements

In most circumstances, in order to register a trade mark in the USA and to maintain your registration in the USA, it is necessary to prove use of your mark in the USA.

What does “basis” of a US trade mark application mean?

When an application for a US Trade Mark is filed, the Applicant is required to state a basis for their application.  This usually involves either making a declaration stating that the applicant intends to use the mark “in commerce” in the USA in relation to the goods and services for which the mark is applied, or are already using the mark “in commerce” in the USA in relation to the goods and services for which the mark is registered. 

What constitutes “Use”?

“Use in commerce” means commerce that can be lawfully regulated and controlled by the United States Congress.  Therefore, using a trade mark in a foreign country does not constitute use of the Trade mark in the USA and cannot be used to support a US Trade Mark Registration.  Simply offering to sell the goods in the USA does not qualify as use.  Therefore, the mere advertising of goods under your Trade Mark in the USA does not qualify as “use”, if sales in the USA have not been made.  Again, merely offering a service under your mark does not qualify as use of a service mark, if the services have not been provided in the USA.

What needs to be filed?

In order for the application to be Registered actual proof of use in commerce is required to be filed.  In addition, once registered, it is necessary to file declarations stating that the Trade Mark is being used in commerce in the USA in relation to the goods and services for which the mark is registered, in order to maintain the registration.  This must be done at regular intervals.

Together with the declaration, a “Specimen” for each class of goods and services is required to be filed to support the declaration.  Each Specimen should show how the Trade Mark is used.  According to the US Trade Mark Rules, a specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods, and the goods must be sold or transported in commerce.  A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services. The specimen must show a direct association between the mark and the services.    A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual Specimen is acceptable.

If your Registration is audited by the USPTO, it is necessary to provide proof of use for every good and service listed in your registration in the audited classes, delete any goods and services for which you can’t prove use, and pay a fee for any deletions.  The USPTO selects between 10 to 15% of declarations of use at random for audits.  Therefore, it is very important to make sure that your Trade Mark Registration is appropriate for the goods and services you are offering under the mark in the USA.  If goods/services are no longer being offered, then they should be deleted from the specification

When does evidence of use need to be filed?

Declarations of use are required:

1. for the application to be registered; and then
2. between the fifth and sixth years after the registration date;
3. between the ninth and 10th years after the registration date; and
4. every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.).

It is recommended that declarations of use be filed at the beginning of the year in which they are due so that you have enough time to resolve any correctable errors without paying any additional fees.

For an application filed on the basis of intent to use, once an application has been accepted for registration you will have six months to file a Declaration of Use and a Sample showing use as discussed above.  Subject to certain requirements, it is possible to extend this sixth month period in blocks of sixth months, up to five times, subject to payment of extension fees. Therefore, it is possible to extend the period of time available to file the first evidence of use, and therefore buy more time to commence commercial use of a mark in the USA, but your application will not proceed to registration until such use has commenced and the Declaration and Sample of use have been filed.

What if you need a break in use but do not wish to abandon your mark in the USA?

If you are not using your Trade Mark in the USA for some or all of the goods and services but intend to use it in the future, then it is also possible to file a declaration of Excusable Nonuse.  Such a declaration should indicate:

1. A list of the goods or services with which the trademark is not in use in commerce;
2. The date of the last use of the trademark in commerce;
3. The approximate date when use in commerce is expected to resume
4. Details regarding the reason for nonuse;
5. Specific steps being taken to resume use.

Are the any circumstances when evidence of use is not required?

It is possible to obtain registration of a mark in the USA before use in commerce has taken place in the UK, if there is a corresponding registration in one of the accepted foreign jurisdictions and this is used as a basis for your US registration.  Evidence of use will then need to be filed between the fifth and sixth years following registration, so use in commerce must have commenced by that point.  Furthermore, if a US registration allowed on the basis of a foreign registration is challenged by a third party, the owner of the registration will have to prove use otherwise the registration will effectively be revoked.

If you would like help with applying to protect your mark or with proving use of your trade mark in the USA, then we would be happy to help.