The Importance of Using Your Trademark in the United States
The very foundation of trademark rights in the United States is use. In fact, the first line of The Trademark Act states that “the owner of a trademark used in commerce may request registration of its trademark …” (1). In essence, Applicants must show use in order to be entitled to registration.
There is an exception for applications based on foreign trademark filings (2). Applicants filing under 66(a) or 66(b) through the Madrid Protocol or 44(d) and 44(e) claiming priority of a foreign Application or Registration, do not have to allege use prior to obtaining a registration.
While applications based on foreign priority can register without showing use, all Registrants must prove use periodically through required maintenance and renewal filings. The first maintenance filing is due between the fifth and sixth year after registration, and the next is due between the ninth and tenth year of registration and then every 10 years after that.
The maintenance requirements are two-fold.
First, Registrants must submit a Declaration of Use (the “Declaration”), attesting that the trademark is in use in the US for each one of the goods and services listed in the Registration. The Declaration is required to feature certain wording and must be signed by an individual with first-hand knowledge of that use (3). Any good or service not in use should be deleted. All claims made in the Declaration require signatories to swear under penalty of perjury that the allegations are true.
Second, trademark owners must submit one Specimen of Use for each class of goods or services (4). Specimens are subject to specific legal requirements as they serve as evidence that the trademark is in use. Specimens for goods tend to be photographs or digital images that show the mark in use in conjunction with the goods, whereas Specimens for services tend to be advertisements that show the trademark and make a clear reference to those services. More on what constitutes an “acceptable” Specimen here.
Generally, after submission of the maintenance filing, a USPTO Examining Attorney will review it, and either issue an acceptance or rejection. Sometimes, however, they will issue an Audit, which includes a request for Proof of Use on a random selection of goods or services (5). Note that Proof of Use is not the same as a Specimen. If the Registrant is unable to present acceptable Proof of Use, the Examining Attorney will issue a second request for Proof of Use for each of the goods and services listed in the Registration. Deadlines for responses are 6 months after issuance, but sometimes only 30 days.
This process can catch some Registrants off guard, especially Foreign Registrants, who have registered and maintained their US Registration for a number of years without issue. Unfortunately, the USPTO must have noticed this, because they have issued a disproportionately large amount of Audits on Registrations based on foreign priority.
Not only can this turn the maintenance process until a months-long ordeal, it also has other consequences. While the USPTO is not yet enforcing the audits punitively, making a false Declaration of Use is nonetheless considered fraud on the USPTO. Additionally, lack of use of a trademark is considered abandonment if it goes on for three or more years. If you have effectively abandoned your trademark, a third party can petition to have your Registration canceled for those goods or services by filing a Petition to Cancel through the Trademark Trial and Appeal Board (“TTAB”). More on the TTAB here. In such a proceeding, having a blatant error or misstatement that is discovered through the Audit process will not present well to the TTAB.
There are certain steps that Registrants can take to prevent issues from arising during this process. Best practice would be to conduct a thorough investigation before making any claims that your trademark is in use. If you find that any of the goods or services are not in use, delete them. If in the future you begin using that trademark for those goods or services, you can file another application.
Practitioners of trademark law also need to be aware of the importance of use in the US, so they can warn and educate their clients.
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1 “Use in commerce” is defined as commerce between nations and commerce between two or more US states. The Lanham Act defines “use in commerce” as commerce that may be regulated by congress. Per the US Constitution, Article 1, Section 8, Clause 3, also known as the Commerce Clause, congress can regulate interstate commerce, commerce between nations and commerce with Native American Tribes.
2 Foreign applicants, do, however, have to allege that they have a “bonafide intent to use” the mark in US commerce.
3 An individual with first-hand knowledge would either be the individual registrant or a representative of a corporate registrant
4 For example, if you had a registration in Class 25 for “t-shirts; pants; athletic tank tops,” it would be sufficient to submit a specimen that only included t-shirts. for one good and/ or service in each class
5 For instance, the USPTO might respond to the maintenance filing in the example given above, with an audit requesting a Specimen for pants and athletic tank tops.