As part of our practice as U.S. trademark attorneys, the attorneys at OW&E work carefully with clients to ensure that your trademarks, and your trademark registrations, are valid and enforceable. One of the most fraught and misunderstood issues relating to trademarks occurs when registrations come up for renewal, including the “use in commerce” requirements enforced by the United States Patent and Trademark Office (USPTO) at renewal time.
What’s the difference between a trademark and a trademark registration?
A trademark is any word, design, slogan, or anything else that symbolizes to the public the source of goods or services. In the U.S., you create your trademark, and develop your trademark rights, by using your mark in the marketplace. “Use” means you have actually distributed goods, or performed services, under the mark. These are called “common law” rights, because the principle of developing trademark rights through use of the mark comes from English common law, the legal system the colonies inherited and continued as the United States.
In most of the rest of the world, trademark rights are first established through a registration, not from use. The first to register a mark gets the exclusive trademark rights, even if someone else has already been using it. Most countries require that the registrant must eventually use the mark in that country, but it’s not an up-front qualification.
In the U.S., registration doesn’t create your trademark rights, but it gives you significant advantages over common law rights. Most importantly, federal registration through the USPTO gives you a presumption of exclusive rights to your mark nationwide, even if you’ve only actually used it in a couple states. If you have only common law rights, your exclusivity extends only to locations where you’ve actually distributed goods (or performed services) under the mark.
Another important advantage of federal registration is the opportunity to file an “intent-to-use” application before you have actually used a mark. (OW&E’s Mel Owen served on the commission that developed this aspect of the USPTO’s trademark registration system back in 1988. https://www.owe.com/attorneys/melville-owen/). An intent-to-use application lets you reserve your place in line for a federal registration. When your registration issues, its effective date will be retroactive back to the date the application was filed. Anyone who files for a conflicting mark in the interim will be denied registration, and you will have prior rights to enforce against their use of the mark.
What is “use in commerce” and why is it important?
Under the U.S. Constitution, Congress may only regulate interstate commerce; it cannot regulate commerce that happens solely within one state. Therefore, to qualify for federal registration, a mark has to be used across state lines (or between a state and a foreign nation). This is what the federal trademark system refers to as “use in commerce.” (The states have their own trademark registration systems for marks that are used within their state.)
You must demonstrate use in commerce in order to get a federal registration (if you start with an intent-to-use application, you will be making a filing about use later), and each time a deadline comes up to renew the registration. And, because we have a use-based system, registrations may only cover goods or services on which your mark is actually being used. Use is demonstrated by a sworn “declaration of use” stating that the mark is being used in commerce on all the goods or services listed on your application (or for renewals, on your registration), and a “specimen of use” – an example of how your mark appears on at least one of the goods, or in connection with at least one of the services. If you are not using the mark in commerce for some of the goods or services, you are required to delete them from your application or registration.
Many lay people (and even some non-trademark attorneys) do not understand the use in commerce requirement. They often include goods and services on federal trademark applications and renewals that they hope to market, rather than what is actually in use. (The only time this is okay is on an initial intent-to-use application, before a statement of use is required; or if you are a foreign national and your application is filed under treaties that require the USPTO to accept foreign applications on the same basis as they are filed in their home country.) Many people in other countries do not understand the use in commerce requirement because it is not how their own country’s registration system works. This is all understandable, but such mistakes can cause real trouble. Filing inaccurate declarations of use or invalid specimens of use could result in fines and even cancellation of the registration.
The USPTO has discovered that as many as 45% of federal trademark renewals include false declarations of use. The percentage is even higher – up to 70% — for renewals filed for registrations originally based on foreign registrations. To deal with this, the USPTO recently implemented an audit process. Under this process, renewals are randomly chosen for audits. If your renewal is audited, you will be required to provide a valid specimen of use for some additional of the goods or services that your declaration of use included. If you cannot do so, those goods or services will be deleted from your registration, you will be subject to fines ($250 per class), and you will then be required to submit valid specimens of use for ALL of the goods or services in your renewal declaration. If you can’t do that, more fines are imposed, and your registration might even be cancelled.
What is a valid specimen of use?
A specimen of use is an actual example of how you use your mark in interstate commerce. For goods, i.e., products and merchandise, the best specimen is a photograph of your product that shows the mark imprinted on the item itself, or the packaging, or on a label or hang-tag attached to the item. If the mark is on a label or hang-tag, the USPTO wants to see the whole product, or at least an identifiable portion of it, along with the label or hang-tag. The mark can also be shown on a shipping container for the item, but in that case the USPTO will also want to see a photo of the items in the container. An actual photo of a real product (or its packaging or label) is required; an artistic mock-up or even a printer’s proof will not be accepted. This is because the USPTO receives many such mark-ups for items that are not actually in use.
It is also possible to submit a webpage as a specimen of use on goods, provided that (1) an image or description of the item is displayed on the page in very close proximity to the mark, and (2) there is clear information for ordering the product, for example, a link to add the item to an online shopping cart. Note that the mere use of a mark in your website domain name will not qualify.
Specimens of use for services can be a little trickier. They must show the mark in connection with the actual services, or in advertising or promoting the services. Note, however, that if you are showing advertising for the services, it is not sufficient to qualify for interstate commerce that you are promoting your services across state lines; you must already actually be providing your services to out-of-state customers. Examples of specimens for services include online display of the mark on webpages where the services are actually provided, or where they are described. For example, if your registration is for retail store services, a webpage displaying the mark with a description of the goods you sell and your retail locations will suffice. If your registration is for online information or online journals or blogs, a webpage showing the mark with those texts will suffice. If you are providing real estate brokerage services, architectural services, or graphic design services, a webpage with text that describes your services will suffice. For restaurants, menus are good specimens.
A common mistake when submitting specimens of use for services is to submit letterhead, business cards, or other business materials which do not on their face mention your specific services. These types of specimens will be rejected by the USPTO.
OW&E will guide you through a successful statement of use
Throughout our over 85 years of trademark practice, the attorneys and paralegals at Owen, Wickersham & Erickson have registered and renewed many thousands of federal trademark registrations on behalf of our clients. We have the expertise to guide you through the trademark registration and renewal process, and we keep ourselves apprised of evolving and ever-changing rules and standards of practice of the USPTO. Working with us will help you avoid common pitfalls and costly mistakes that can so easily be made when laypeople try to navigate the process on their own. Our standard fees for preparing and filing trademark applications and renewals include working with you to ensure that we’ve submitted declarations of use and specimens that have the best chance of being accepted.
– Contributed by Linda Joy Kattwinkel