The Trademark “Use” Requirement

In order for a trademark to become registered at the US Patent and Trademark Office, it must be “used” in commerce on or in connection with the goods or services for which registration of the trademark is sought. The “use” requirement is satisfied either at the time a trademark application is filed, or later by means of a document known as a Statement of Use.

There are several basic parts of the “use” requirement. All of these parts must be in place for the requirement to be satisfied. The trademark owner will also be required to declare under penalty of perjury that the facts surrounding the use of the trademark are true, or are believed to be true, so the “use” requirement and its individual parts should not be taken lightly.

The first part is that the use must be “in commerce.” This means interstate or international commerce, and not merely commerce within a single state. It also means that the use of the trademark is not merely a ruse or a sham transaction merely to show the trademark on the goods or in connection with the services. Instead, it must be actual commerce, that is, a bona fide business transaction, sale, etc. An actual sale is required.

The second part is that the use must be “on or in connection with the goods or services.” Use of the trademark actually on the goods, or on a container for the goods, at the time the goods are sold or delivered to a customer will be accepted without question by the Trademark Office. Other types of uses are more problematic. If possible, you should use the trademark on the goods themselves, or at least on a container for the goods, to ensure trouble-free acceptance of your proof of use of the trademark.

If the trademark is to be registered for services, then you should make sure that the trademark is prominently displayed at a point of purchase or provision of the services. Business cards and letterhead are generally not acceptable uses of trademarks for purposes of registration. Examples of acceptable uses include: a) point of purchase displays, b) website and television advertising which inform the customer of the services, price and how to purchase the services, and c) uniforms and vehicle displays visible to the customer at the time the services are performed. The services must have actually been performed.

The third part is that the use must be on or in connection with the goods or services for which registration is sought. Trademarks are registered only for particular goods or services. You must make sure that the trademark is actually used on or in conjunction with those goods or services. The trademark can be used with other goods or services also, but the trademark must at least be used on or in connection with the particular goods or services which are listed in your application for registration.

The fourth part is that the use must be of the same trademark for which you are applying to register. Use of a similar trademark or a variation of the trademark is usually not acceptable. If the trademark includes a design element (not just text), then the same design element must be present in the trademark as it is used. Preferably, the exact same trademark as is submitted with your application for registration should be used on or in connection with the goods or services. Thus, it is important at the time the application is prepared to make sure that the trademark which you are applying to register is the same as the trademark you will be using on or in connection with the goods or services you will sell.

The fifth part is that the use must be a “trademark” type of use, not another type of use. This means that the trademark should be used in such a way that the consumer will recognize it as a trademark (that is, as a “brand” for the goods or services), rather than as something else (for example, as ornamentation, as a name for the goods, as a description of the services, etc.). If the goods are of a type that normally does have ornamentation (such as clothing, jewelry, household items, etc.), then you should make sure that you use the trademark in a way that is unmistakably a trademark use, such as, by using the trademark on a label attached to the goods, using the trademark on a container for the goods, etc.

The last part is that you must provide the Trademark Office with an example of the use of the trademark in the form of a “specimen.” The requirements for a specimen are discussed in a separate post. However, note that the specimen should be consistent with all of the other requirements detailed above, that is, the specimen should show that the trademark is actually used in commerce on or in connection with the goods or services for which registration is sought.

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