If you’re wondering how to maintain a U.S. trademark registration or what counts as “use in commerce,” it’s important to understand the legal foundation of U.S. trademark rights. Unlike some other countries, the United States requires active use of a trademark to gain and keep protection.
In the United States, the foundation of trademark rights is use. According to the Trademark Act, “the owner of a trademark used in commerce may request registration of its trademark.” In other words, applicants must generally show use to be entitled to registration.
There are exceptions for foreign-based applications. Under Sections 66(a), 66(b) (Madrid Protocol), 44(d), and 44(e) of the Lanham Act, applicants relying on a foreign trademark registration or application can obtain a U.S. registration without first showing use. However, even foreign registrants must later prove use during required maintenance and renewal periods.
Ongoing Use Requirements
Registrants must file maintenance documents at specific intervals to keep their trademark registration active:
- Between the 5th and 6th year after registration
- Between the 9th and 10th year
- Every 10 years thereafter
These maintenance filings consist of two parts:
1. Declaration of Use
Registrants must submit a Declaration of Use affirming that the mark is actively used in the U.S. for each listed good or service. This declaration must:
- Be signed by someone with firsthand knowledge of use (e.g., the owner or a company officer)
- Contain legally required wording
- Be truthful under penalty of perjury
- Remove any goods or services not currently in use
2. Specimen of Use
Trademark owners must also submit at least one Specimen of Use for each class of goods or services. The specimen must:
- For goods: show the mark on packaging, labels, or product images
- For services: appear in ads, websites, or brochures clearly promoting the service
Specimens must meet specific legal criteria, and not every example of brand use will qualify.
Audits and Proof of Use Requests
After submission, the USPTO may accept the filing or issue an audit. An audit is a deeper review that randomly selects goods or services and requests additional Proof of Use (not just specimens). If proof isn’t sufficient, the USPTO will ask for more evidence for all listed goods or services.
Deadlines to respond vary but can be as short as 30 days or as long as 6 months.
Common Pitfalls and Legal Consequences
Many registrants—especially foreign applicants—are caught off guard by audits. Unfortunately, USPTO data shows that registrations based on foreign priority are audited at disproportionately high rates.
Consequences of mishandling these filings include:
- Time-consuming audits and additional document requests
- Accusations of fraud if false claims are made in the declaration
- Potential abandonment if the mark isn’t used for 3+ years
- Risk of cancellation through a TTAB Petition to Cancel, or through an Expungement or Reexamination Proceeding
If an error or omission is exposed during the audit, it can damage your credibility in any future dispute or proceeding.
Best Practices to Avoid Trademark Loss
To avoid issues:
- Conduct an internal use audit before submitting any filing
- Remove any goods or services that are not actively in use
- Reapply later if you resume use for deleted goods or services
Attorneys practicing trademark law should counsel clients proactively on these use requirements—especially those with foreign-based registrations.
Use is the backbone of U.S. trademark protection. Understanding and respecting that standard is the key to keeping your registration valid and enforceable.
Have questions about your trademarks?
Contact Stemer Law | hello@stemerlaw.com | (303) 928-1094 | Based in Colorado | Serving clients nationwide and internationally
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