What is Proof of Use for Trademark Registration?
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Proof of use is essential evidence demonstrating how you're using your trademark in commerce for the goods or services specified in your trademark registration application. Depending on your filing basis, proof of use may be required at different stages of the trademark registration process.
When is proof of use required?
There are four different situations where proof of use is required; these are as follows:
1. Filing a use-based application: If you filed a trademark application under Section 1(a) (Actual Use), meaning you're already using your mark in commerce, as part of the minimum filing requirements, you must submit proof of use along with your initial application.
2. Filing proof of use for an Amendment to an Application to Allege Use: An Amendment to an Application to Allege Use is a document proving that you're using your trademark in commerce.
You can file this document before your trademark application is reviewed by the USPTO examining attorney or before the mark is approved for publication. If your mark has already been published for opposition, you would file a Statement of Use.
3. Filing proof of use for a Statement of Use: If you filed a trademark application under Section 1(b) (Intent to Use), indicating a bona fide (meaning sincere) intent to use your mark in commerce, you'll need to submit your proof of use within six months after receiving a Notice of Allowance. If you're not yet ready to provide proof of use, you can request an extension with associated government fees.
4. Filing proof of use for renewal of registration: When your registered trademark reaches its renewal deadline (typically 5-10 years after the registration date), you must provide a Statement of Continued Use to demonstrate ongoing use of the mark in commerce. You'll also have to pay government fees with the renewal.
Types of proof of use
The actual evidence you provide may be referred to as your "specimen." The type of specimen you send will vary depending on your specific business.
Examples of suitable evidence for goods and services include:
Proof of use for goods:
- Photographs showing the mark on a tag or label affixed to the goods.
- Hang tags or labels with the mark and the generic name of the actual goods, along with informational matter typically appearing on a tag or label used for these goods.
- Screenshots of web pages with the URL and access or print date, demonstrating the mark's usage in connection with the goods at their point of sale.
- Photographs of the mark on the packaging, with the goods visible through the packaging.
- Photographs of the mark on packaging, with the packaging identifying the generic name of the goods included in the package.
Proof of use for services:
- Marketing materials such as copies of brochures or flyers where the mark is used in advertising the services.
- Photographs of the mark on a retail store or restaurant signage.
- Photographs of the mark on service vehicles.
- Screenshots of web pages with the URL and access or print date demonstrating the mark's use in the actual sale or advertising of the services.
The USPTO conducts random audits of registrations. This is to maintain the principal trademark registry's reliability. Registrations can be selected for audit based on specific criteria. This may include the number of classes, goods, or services in the registration.
What happens if I'm audited?
If your registration is audited, you'll have a deadline of six months after an office action is issued. Or it'll be until the end of the statutory filing period (excluding a grace period). Ultimately, its date is later to provide proof of use. Your registration will be canceled if you don't respond to the first or second office action.
You can respond to the office action by filling out the "Respond to Office Action for Post-Registration Matters" form in the Trademark Electronic Application System (TEAS). You must attach images of your proof of use. Included with this, you must add a declaration affirming the authenticity of the provided evidence.
Get in touch with a trademark attorney
Regarding the Trademark Act, the USPTO, and intellectual property, contacting a qualified trademark attorney is best. They can help you with trademark filing online, renewals, infringement issues, and anything else you may need assistance with.
What is a Statement of Use for a trademark?
A Statement of Use is a legal document filed with the United States Patent and Trademark Office (USPTO). It proves that a trademark is in use in commerce. It's typically used when a trademark application was initially filed as an "Intent to Use" application, and the mark is now actively used for the specified goods or services.
How do you prove a trademark is first used?
To prove that a trademark is first used, you provide evidence of its commercial usage for the specified goods or services. This evidence can include photographs, labels, packaging, brochures, website screenshots, or other materials. This must clearly show the mark used in connection with the products or services.
What happens if I don't file a Statement of Use?
If you don't file a Statement of Use when required, your trademark application may be abandoned by the USPTO. This means that your trademark registration won't be granted, and you'll lose the benefits of federal trademark protection.
Should I file a trademark before use?
Filing a trademark application before using the mark is possible in the United States. This is known as an "Intent to Use" application. It allows you to secure trademark rights for a mark you intend to use in the future, but you'll need to prove actual use later through a Statement of Use. Whether to file before or after use depends on your specific business needs and circumstances. Consulting with a trademark attorney can help you make the right decision.
Can I lose a trademark if I don't use it?
Yes, you can lose a trademark if you don't use it. In the United States, trademarks require actual use in commerce to maintain their registration. Failure to use a registered trademark for an extended period can make it vulnerable to cancellation, either through a third party's challenge or an action by the United States Patent and Trademark Office (USPTO). It's important to continuously use and protect your trademark to maintain its legal rights and benefits.
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Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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