How to Prove Use in Commerce for Your Trademark

If you want to register a trademark in the US, you have to show that you are using it in commerce before that trademark can be fully registered. This means that you are selling or offering your goods or services under the mark to customers in the US for your specific goods or services. That does not mean, however, that you have to be using your mark prior to filing your application. The USPTO allows you to file your trademark application as either in use or intent to use. In this blog, we will explain how you can prove use in commerce after filing an intent to use application, and what kind of evidence you need to submit depending on your type of goods or services.

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If you want to register a trademark in the US, you have to show that you are using it in commerce before that trademark can be fully registered. This means that you are selling or offering your goods or services under the mark to customers in the US for your specific goods or services. That does not mean, however, that you have to be using your mark prior to filing your application. The USPTO allows you to file your trademark application as either in use or intent to use. In this blog, we will explain how you can prove use in commerce after filing an intent to use application, and what kind of evidence you need to submit depending on your type of goods or services.

What is an Intent to Use Application?

An intent to use application is a type of trademark application that allows you to reserve a mark before you actually use it in commerce. You can file an intent to use application if you have a bona fide (true) intention to use the mark in the near future, but you are not ready to launch your products or services yet. This way, you can secure your priority date and prevent others from registering a confusingly similar mark.

However, an intent to use application does not grant you the full rights of a registered trademark. You still need to prove that you have started using the mark in commerce within six months of receiving a notice of allowance from the USPTO. If you fail to do so, your application will be abandoned and you will lose your priority date. You can request up to five extensions of six months each, but each extension will cost you an additional fee and require a good cause showing.

How to Prove Use in Commerce?

To prove use in commerce, you need to submit a statement of use and specimens of use to the USPTO. A statement of use is a sworn declaration that you are using the mark in commerce as of a certain date. A specimen of use is a sample of how you are displaying the mark on your goods or services or in connection with them. The USPTO will examine your statement and specimens to determine if they meet the legal requirements for use in commerce.

The requirements for use in commerce vary depending on the type of goods or services you are offering under the mark. Here are some examples of how to prove use in commerce for different types of goods and services:

  • For goods that are sold or transported across state or national borders, such as clothing, toys, electronics, etc., you need to show that you are placing the mark on the goods themselves, on their tags or labels, on their packaging, or on their displays. Clothing, for example, should ideally show the trademark on a tag or label that is attached to the clothing, but merely having the trademark printed on the front of the shirt is likely not enough to prove use (as that is generally considered “ornamental use” instead of being indicative of a source). For cosmetics, however, having the trademark printed on the product or the box of the product is likely sufficient to prove use.

  • For services that are rendered across state or national borders, such as online platforms, consulting, education, entertainment, etc., you need to show that you are using the mark on your website, app, social media, or other online platforms where you offer your services to customers. You can also show that you are using the mark on business cards, letterheads, invoices, contracts, or other documents that show the rendering of the services.

  • For services that are not rendered across state or national borders, such as restaurants, salons, and gyms, you need to show that you are using the mark on your storefronts, signs, banners, or other displays where you offer your services to customers. You can also show that you are using the mark on menus, flyers, advertisements, or other materials that promote the services.

Tips for Proving Use in Commerce

Here are some tips for proving use in commerce effectively and efficiently:

  • Make sure your specimens match your description of goods or services in your application.

  • Your specimens need to show the mark exactly as it appears in your application.

  • Your specimens must show actual use of the mark in commerce and not mere preparations for use. For example, do not submit prototypes, mock-ups, samples, or drawings of the mark unless they are actually used in commerce.

  • It is important that your specimens show use of the mark as a source identifier and not as a decorative feature. So, do not submit specimens where the mark is obscured, blended, or overshadowed by other elements.

  • You also need to make sure that your specimens are clear, legible, and of good quality. If they are not, the trademark examiner could issue an office action refusing your proof of use.

Proving use in commerce is a crucial step for registering a trademark in the US. It shows that you are not only claiming the mark, but also using it to distinguish your goods or services from others. However, proving use in commerce can be challenging and time-consuming, especially if you have not started using your mark yet or you are offering different types of goods or services under the mark. That is why it is important to plan ahead, prepare your evidence, and follow the USPTO guidelines. You can also hire a trademark attorney to help you with the process and avoid any mistakes or delays.

If you have any questions or comments about proving use in commerce, specimens, or other trademark related concerns, please feel free to contact us. We would love to hear from you and assist you with your trademark needs.