Whether you are launching a new business or a new product line or service offering within your established business, you will undoubtedly come up with ways to identify it for your customers. This can include giving it a name but maybe also associating it with a graphic logo and/or icon or even colors, a sound, animation or gesture, a shape, or a smell (yes, I meant that). All of these can be trademarks that serve as a shorthand to help your clients know how to refer to your offering and recollect it as desirable because of its quality and characteristics.
When you launch, using a trademark is the basis for exclusive rights, intended to help your buyers avoid purchasing the wrong thing or misattributing the qualities of other products or services to your company. Those rights also support your ability to distinguish what you sell from that of your competitors or others who may want to take advantage of your hard work in teaching the world about it. Once you’ve started using the trademark, you have some limited rights in the places where you sell the product or service in the United States. Still, you may want broader control over the name or sign that covers the whole country and its territories (or even an ability to stop others from using a similar name or sign in other countries). This is where trademark registration comes in.
Unlike the registration process in most other countries, obtaining a U.S. national trademark registration usually requires using the trademark in relation to the goods and/or services listed in the application. You need not have that use on the day you file the application as long as you have a good faith intent to begin such use. But, sooner or later (typically not more than four to five years from when you apply), you will need to “prove” use to get the registration. I use the word “prove” in quotes because the agency that evaluates your application, the United States Patent and Trademark Office (USPTO), does not actually look for proof that you are really using the mark. Rather, the required proof essentially shows that the name or sign serves its purpose as a trademark.
What do I mean here? The USPTO requires different use evidence depending on whether you seek to register the trademark for goods (usually tangible merchandise) or services. When the product is good, the USPTO requires evidence showing the trademark on the goods, their packaging, tags, labels, or sometimes product inserts. Under certain circumstances, it may also accept a point-of-sale display or an e-commerce webpage. For services, the USPTO requires evidence showing the trademark on advertising or marketing materials (including on a webpage) and referencing the services. This evidence does not show that the goods were actually sold or transported across state or national borders or that the services were rendered to consumers in interstate commerce in the United States as is required to establish the underlying rights. Rather, it just shows that the trademark has been used in a manner that consumers would recognize as identifying the offering. The actual requirement of use in commerce is just something that the applicant will swear to under penalty of perjury.
For this reason, there are many U.S. trademark registrations for which the marks are not actually in use, including ones for which the use has been discontinued and ones for which the registration was fraudulently obtained. This is why one should not immediately give up when a search discloses a prior registration for the same or a highly similar trademark registered in the USPTO. There are often several possible actions that one can take if their U.S. trademark application is refused based on a prior registration or if the owner of that prior registration takes action to prevent the application from proceeding to registration.
The message here is that using a trademark in interstate commerce is a requirement under U.S. trademark law but is not sufficiently policed by the USPTO. Proving use in the USPTO is about how and where the mark appears. You will attest to the actual use in interstate commerce and rely on actual evidence of that when enforcing or defending your registration.
Not sure when to apply or when to start using your trademark? Uncertain whether your evidence of use will qualify? Facing a refusal you don’t know how to overcome? Contact me with your questions or for my solutions.
ABOUT MATTHEW ASBELL
Matthew Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the United States and throughout the world. He also provides advice on patents, copyrights, domain names, and other related areas. With prior background in the entertainment industry, information technology, and medicine, he is comfortable working with a wide range of clients in diverse industries. In addition, his certifications as a Social Media Strategist and software Master Instructor equip him to handle complex intellectual property matters arising in the Web 2.0 and FinTech space.