Quick Summary
After receiving a Notice of Allowance (NOA) from the USPTO for a trademark application, you must submit proof of use in commerce before your trademark can be officially registered. This proof, known as a Statement of Use (SOU), includes specimens showing actual commercial use of the mark in connection with the applied-for goods or services. Understanding what qualifies as "use in commerce" is critical to ensuring compliance and securing your trademark rights.
Common Questions & Answers
1. What does "use in commerce" mean for trademarks?
"Use in commerce" means that the trademark is actively used in selling or transporting goods/services across state lines or internationally. For goods, this means displaying the mark on packaging, labels, or products that are sold. For services, it involves using the mark in advertisements, websites, or promotional materials.
2. What is a Notice of Allowance (NOA)?
A NOA is issued when a trademark application has cleared the examination and opposition phase but has not yet been registered. The applicant must then provide proof of use in commerce or request an extension.
3. What evidence is required in a Statement of Use (SOU)?
Applicants must submit clear specimens that demonstrate real-world use of the trademark, such as product packaging, website screenshots showing online purchases, brochures, or service advertisements.
4. What if I’m not using the trademark yet?
You can file a Request for an Extension of Time to file the SOU, which grants an additional six months to submit proof of use. Up to five extensions (totaling 36 months) are allowed.
5. What happens if my Statement of Use is rejected?
If the USPTO rejects your SOU, it is usually due to insufficient evidence. You may have a chance to amend the submission or reapply under a new trademark application.
Step-by-Step Guide to Submitting Proof of Use
- Identify the correct specimen type: For goods, use photos of packaging, product labels, or tags with the trademark visible. For services, use promotional materials, websites, or advertisements displaying the mark in connection with the service.
- Ensure real commercial use: The product or service must be actively sold or offered in interstate commerce.
- Submit the Statement of Use (SOU): File through the USPTO’s online system (TEAS) and include your selected specimens.
- Pay the required fees: There is a government fee per class of goods/services.
- Await USPTO review: If accepted, the trademark will be registered. If rejected, you may need to amend or appeal.
Unacceptable Evidence of Use
Submitting incorrect or inadequate evidence can result in rejection. The following examples are NOT acceptable evidence of use in commerce:
- Mockups or digitally altered images: A photoshopped product label or packaging that has never been used in actual sales.
- Website screenshots without purchasing functionality: A website merely displaying the trademark without an actual method for ordering the goods/services.
- Internal company materials: Business cards, letterheads, invoices, and internal documents do not prove public use.
- Press releases and promotional materials alone: While helpful, these do not qualify unless accompanied by proof of sales.
- Social media posts or advertisements without sales evidence: Promotional content without proof of actual transactions is insufficient.
- Shipping labels without associated sales proof: Labels alone do not confirm that goods have been sold to customers.
- Trademarked goods not yet available for purchase: If the product is not being actively sold, it does not qualify as use in commerce.
Acceptable Types of Evidence of Use
The USPTO accepts the following as valid proof of use in commerce:
For Goods:
- Photographs of the product with the trademark displayed on it (e.g., tags, labels, or directly on the item).
- Screenshots of e-commerce product listings that include the trademark and a functioning “Add to Cart” or purchase button.
- Invoices, receipts, or sales records showing transactions where the trademarked goods were sold.
- Shipping documents or packaging materials with the trademark clearly shown in relation to the sold product.
For Services:
- Website screenshots with active services and a way to engage (such as booking or purchasing options).
- Brochures, flyers, or menus featuring the trademark and the offered services.
- Customer testimonials or contracts showing that the services were rendered under the trademark.
Historical Context: The Evolution of Trademark Use in Commerce
Trademarks have been recognized in commerce for centuries. In the U.S., early trademark laws emerged in the 19th century, culminating in the Lanham Act of 1946, which still governs trademark registration today. Before federal registration became standard, businesses relied on common law rights, meaning trademarks were protected based on actual use rather than registration.
In the digital age, "use in commerce" has evolved to include e-commerce, digital advertising, and social media branding. The USPTO has adapted its guidelines to recognize modern commercial activities as valid use in commerce, making it easier for online businesses to secure trademark protection.
Business Competition Examples
1. Nike vs. New Competitors
Nike's swoosh logo is a strong example of proper use in commerce, appearing on products, marketing materials, and advertisements. Small competitors often struggle to establish trademarks due to lack of consistent branding.
2. Apple Inc. and "iPhone" Trademark
Apple successfully trademarked "iPhone" by demonstrating the mark’s use on product packaging, advertising, and online sales platforms.
3. Small Business Branding Challenges
Many startups fail to submit sufficient evidence of use, leading to abandoned trademark applications. This highlights the importance of proper documentation.
The Debate: Is "Use in Commerce" Too Strict?
Argument for Stricter Rules: Ensuring actual use prevents trademark squatting, where entities register marks without intention to use them.
Argument for Relaxed Rules: Small businesses and startups may need longer to establish commercial presence. More flexibility would encourage innovation without excessive legal burdens.
Key Takeaways
- "Use in commerce" requires actual sale or offering of goods/services across state lines.
- The Statement of Use must include valid specimens proving real-world use.
- Extensions are available but limited to 36 months.
- Digital marketing and e-commerce can qualify as proof of use.
- Failure to submit sufficient evidence may lead to application rejection.
Expert Invitation
Have trademark questions? Consult with experts at http://inventiveunicorn.com for guidance on trademark registration and brand protection.
Wrap-Up Conclusion
Submitting the right evidence of use in commerce is essential to securing a trademark. Understanding the requirements ensures smoother registration and long-term brand protection. Whether you’re launching a startup or expanding a brand, proper documentation and timely filing are key to safeguarding your intellectual property.
