Evidence of Use for Trademark
In order to acquire and maintain a trademark registration, you must prove you are using the trademark in the marketplace/commerce for the products and/or services indicated in your trademark application/registration.
During The Application Process
During the trademark application process, there are two options for when you can submit the evidence of use:
- Use In Commerce Application (1a):
- If you are using the mark at the time you file the trademark application, you can submit the evidence of use showing the mark is already being used. This is called a use in commerce application (1a application).
- The evidence must reasonably prove to an general consumer that the mark is already being used for the products and/or services you are applying for in the trademark application.
- Increased Risk of Rejection
- If the use in commerce is not sufficiently established or the specimens are deemed inadequate, the application might face rejection.
- Note, the following categories of "sales" do not qualify for Use In Commerce
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Crowdfunding Campaigns: Evidence of a crowdfunding campaign, such as a page on Kickstarter or Indiegogo, is not considered acceptable because it usually indicates future use rather than actual current use in commerce.
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Presales: Documentation of presales, where goods are being sold in advance of their availability, does not demonstrate that the goods are currently in commerce.
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"Coming Soon" Notices: Any indication that goods or services will be available in the future, such as "coming soon" notices on a website or promotional materials, is not acceptable as it does not show current use in commerce.
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"Out of Stock" Notices: Listings that indicate goods are "out of stock" do not demonstrate that the goods are available for purchase at the time of the application. This fails to show current use in commerce.
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Beta Testers: Offering products or services to beta testers, where the primary purpose is to test the product rather than to engage in commercial transactions, is not sufficient to demonstrate use in commerce.
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Advertising Materials Alone: Mere advertising or promotional materials, without evidence that the goods or services are actually available for purchase, do not constitute acceptable evidence of use.
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Internal Use: Use of the mark solely within the company or for internal purposes, such as internal reports or internal software, is not considered use in commerce.
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Preparatory Use: Activities that are preparatory to actual use in commerce, such as market research or product development, are not sufficient.
- Intent To Use (1b):
- If you haven't started using the mark at the time the trademark application is filed, you can submit the trademark application as an intent to use (1b application). This indicates that you are preparing to use the mark and want to sure it know while you prepare to use it.
- If you file an intent to use application, you don't have to file evidence of use at the time the trademark application is filed. Rather, you have to file the evidence within 6 months after the trademark application has been examined and allowed.
- You can extend this deadline for up to 36 months by paying extension fees in 6 month increments.
Benefits Of Use in Commerce V. Intent To Use
- Use In Commerce
- Avoid Additional Steps and Fees
- When filing as "use in commerce," you do not need to file a Statement of Use (SOU) or request extensions, which are necessary steps (and incur additional fees) for "intent to use" applications.
- Proof of Use
- You already have proof of the mark being used in commerce, which can strengthen your application and can be beneficial if any oppositions or challenges arise.
- Presumption of Validity
- Upon registration, the mark is presumed to be valid, and the owner is presumed to have exclusive rights to use the mark in commerce for the goods or services listed in the registration.
- Intent To Use
- Time to Develop
- Filing as "intent to use" allows you to secure a priority filing date while you finalize the development and marketing of your product or service.
- Market Evaluation
- It provides time to assess market viability and prepare for a successful launch without the immediate pressure of proving use in commerce.
- Flexibility
- You can request extensions of time (up to 36 months from the Notice of Allowance) to make sure you are ready to use the mark in commerce.
After The Trademark Registration
Once your trademark has been registered, to keep the trademark active and enforceable, you must submit ongoing evidence of use and a fee at:
- Between The 5th & 6th Year After Registration:
- A Declaration of Use (or Excusable Nonuse) under Section 8 must be filed.
- Between The 9th And 10th Year After Registration:
- A combined Declaration of Use (or Excusable Nonuse) and Application for Renewal under Sections 8 and 9 must be filed.
- Every 10 years Thereafter
- The combined Sections 8 and 9 filings must be made.
Examples Of Use | What Counts?
For Products/Goods
The Goods/Products Themselves
- You could submit a photo of the mark on the product itself.
Labels or Tags Attached to the Goods
- You could submit a photo of a label or tag with the mark attached to the product.
Packaging for the Goods
- You could submit a photo of packaging with the mark for the product.
Sales Display Signs/Placards where the Goods are Sold
- You could submit a photo of product display.
Website Selling The Product
- You could submit a photo/screenshot of a web page showing the mark where your goods are sold.
Software Products
- You could submit a photo/screenshot of a software launch screen with the mark in an introductory message box, or a screenshot of a web page with enough information to download the software and the trademark appearing in the title bar.
For Services
Website Selling The Service
- Online advertising or printed matter showing a direct link/association between your mark and the services. Please must be able to purchase the service on the website
Other Types Of Evidence For Services (NOT PRODUCTS) Include:
- Television/Radio/Streaming Commercials for the services
- An MP3 file of a television commercial for laboratory testing in the field of genetics and ancestry.
- Marketing material showing a direct association between your trademark and the services
- A scanned copy of brochures and leaflets advertising or marketing various hospital services.
- Signage where the services are rendered
- A photo of business signs on the front of a grocery store.
- Material used in the providing/rendering of the services
- A photo or scanned copy of a menu for restaurant services.
- A photo of a band performing on stage with the band's name displayed during the performance (e.g., the band name on the band's drum) for live musical entertainment services).
- A screenshot of the title and launch screens for ongoing television programs and video game entertainment services.
- Invoices showing a direct association between your mark and the services
- A photo or scanned copy of an invoice showing your trademark that includes the mark at the top of the invoice.
- Business cards and letterhead showing a direct association between your mark and the services
- A photo or scanned copy of business cards and letterhead that indicate you provide publishing services.
