What Happens If I Can’t Prove Use In Commerce?

If you have filed a trademark application based on your intent to use a trademark in commerce, before your trademark can be fully registered, you are have to prove use in commerce with the goods or services listed in your application. In this blog, we will discuss what use in commerce is, why you need to prove it, what happens if you can’t prove use in commerce, and whether there are any ways to continue protecting your rights after that point.

profile silhouette of a woman in front of a colorful background

If you have filed a trademark application based on your intent to use a trademark in commerce, before your trademark can be fully registered, you are have to prove use in commerce with the goods or services listed in your application. In this blog, we will discuss what use in commerce is, why you need to prove it, what happens if you can’t prove use in commerce, and whether there are any ways to continue protecting your rights after that point.

What is use in commerce?

So, what does use in commerce mean? The USPTO defines use in commerce as a “Bona fide use of a trademark in the trade of goods or services.” To elaborate on that, use in commerce means using your trademark in selling or transporting your goods out of state or in providing services to customers who live outside your state. Let’s say, for example, you make widgets in Pennsylvania and sell them to buyers in other states, like California or Illinois. Or you might provide website design services from your home in Oregon to customers in Georgia.

To prove use in commerce, you need to submit a specimen showing how you use your trademark. A specimen is an example of how you display your trademark on your goods, packaging, labels, tags, or advertisements for services. You also need to provide the date of first use for your trademark in commerce and the date you first used it anywhere.

Why do I need to prove use in commerce?

Proving use in commerce is important because it shows that you have a legitimate claim to your trademark and that you are not trying to reserve it without actually using it. Although use in commerce is not required when you file an application, the United States Patent and Trademark Office (USPTO) requires proof of use prior to registration.

Proof of use can either be shown when you file the application (under a section 1(a) application) or when you file a statement of use (SOU) or an amendment to allege use (AAU) after filing an intent-to-use application (Section 1(b)) before a trademark is allowed to federally register. When submitting proof, you need to submit a specimen and dates of when your goods and services were first rendered or provided in commerce for each class on your application.

What is Bona Fide Trademark Use?

Bona fide trademark use means that the trademark owner must use the mark in the ordinary course of trade, and not just to reserve a right in the mark. This means that the trademark owner must show actual use of the mark, not a sales token or sham use of it. So, selling one product to a friend or giving away free samples does not qualify as bona fide use.

It also requires that the goods must be sold or offered in interstate commerce, which means commerce that is lawfully regulated by Congress. This includes selling or transporting goods across state lines, or providing services to customers who live in different states.

Why is Bona Fide use important?

Because it is one of the requirements for obtaining and maintaining federal trademark registration. The USPTO will examine whether the trademark applicant has made bona fide use of the mark in connection with the goods or services listed in the application. If the applicant cannot prove bona fide use, the USPTO may refuse to federally register the mark or cancel an existing registration.

Bona fide trademark use also affects the scope and strength of trademark rights. The more widespread and consistent the bona fide use of a mark is, the more likely it is that the mark will be recognized as a source identifier by consumers and courts. This can help the trademark owner enforce their rights against infringers and prevent others from registering confusingly similar marks.

Therefore, bona fide trademark use is essential for any trademark owner who wants to protect their brand identity and reputation in the marketplace.

What happens if I can’t prove use in commerce?

When the government requests your proof of use, they give you six months to provide your SOU or AAU. If you cannot prove use within that timeframe, you may request an extension of time instead of proving use. The extension of time grants you an additional six months of time to prove use in commerce. You can file up to 5 separate extensions of time (or 36 months in total).

No reason is needed for the first extension. However, if you need to file additional extensions, then you must specify the legal reason for your continued extensions. This is because trademark applications require that you have a bona fide intent of using it in commerce.

If you file an SOU or an AAU after filing an intent-to-use application and you can’t prove use in commerce for some or all of the goods or services in your application, the USPTO will issue an office action refusing registration for those goods or services. You will then have three months (with an optional three-month extension) to respond to the office action by either submitting acceptable proof of use or deleting the goods or services that are not in use.

If you cannot provide proper evidence of use during that time, the goods or services that you could not prove in use in will be removed from your application. If you could not prove use at all, then your entire application will become abandoned.

Will I lose all protections of my mark?

If you can’t prove use in commerce for some or all of the goods or services in your application or registration, you may lose some or all of the benefits and protections of your trademark registration. However, you may still have some common law rights based on your actual use of your trademark in a particular geographic area. Common law rights are not as strong as federal registration rights, but they may allow you to prevent others from using confusingly similar marks in the same area.

To avoid losing your trademark rights, you should make sure that you are using your trademark in commerce regularly and properly, and that you are filing the required maintenance documents with the USPTO on time. You should also monitor your trademark for possible infringement or dilution by others, and take appropriate action to enforce your rights.

If you need help with proving use in commerce for your trademark, you can contact us for advice on the best practices and procedures for your situation.