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Proving Commercial Use Of Your Product Or Service For The USPTO

February 27, 20235 min read

Proving commercial use of a trademark for the United States Patent and Trademark Office (USPTO) includes submitting use declarations as part of the initial and renewal applications. Understanding the requirements of the trademark application and what consists of sufficient proof can streamline the processing of a trademark application and reduce the chances of unnecessary delays or an application rejection due to insufficient proof. For help navigating the trademark application process, contact an experienced trademark attorney at Grabbe Law Office by clicking here or calling (785) 621-4711.

Proving Commercial Use of a Trademark To the USPTO

To obtain trademark protection for commercial use, the USPTO requires the product to be sold across state lines, as legitimate sales in the general course of business. Service providers must provide their services to legitimate clients, and providing service in multiple states is required. That requirement, plus  “specimen,” usually proof of an advertisement for services, must be completed to apply for a commercial trademark.

To support a claim of use, the application or registration must produce a specimen of the trademark used in connection with the commercial sale of the goods or services it denotes. Different industries have different requirements to meet the condition of “used in the general course of trade,” so what would be acceptable proof for a clothing company may not be acceptable proof for a marketing agency.

How to Prove Commercial Use of a Trademark for Goods

Trademarks are part of the brand and likeness of a particular business, used in the commercial sale of goods and services. To prove that the trademark for which they are applying is in commercial use requires the applicant to provide a statement of use (how the trademark is used in your branding) and a specimen of the trademark, such as:

·       Photo of the item with a tag or label attached, showing the trademark and name

·       Photo of the item’s packaging, showing the trademark on packaged goods

·       Photo of the goods on display in a retail setting

·       Website showing the goods for sale, the trademark, and a point-of-sale link for purchasing the item(s)

Not all commercials or other advertisements featuring the goods and trademark are sufficient for the specimen requirement of the USPTO. The application must show the trademark being used in commerce with the good(s).

Proving Commercial Use of a Trademark for Services

The documentation of use for a trademark associated with paid services differs from that required for commercial goods. To prove that a trademark is used in connection with a commercial service, the application’s specimen could include one of these examples:

·       A website with the service mark and list of advertised services associated with the trademark

·       Non-digital advertisement showing the service mark in connection with advertised services (mailer, magazine ad, etc.)

Submitting the correct use of a specimen for your service mark application can expedite the process for registration. If you have questions about what constitutes sufficient proof for a service mark, an experienced intellectual property attorney at Grabbe Law Office can ensure that your registration application meets the right criteria for your industry and the type of product sold.

Terminating Trademark Protection

Sellers of goods or services under a registered trade or service mark must notify the USPTO of any changes to their offerings or if they cease trading in association with the trademark. If a business no longer carries goods or provides certain services associated with its registered trademark, then it can terminate the use of the trademark in conjunction with those items, abandon the trademark, or eliminate certain items from its registration, by submitting a modification form with the USPTO. If the applicant cannot show the use of the trademark with their claimed goods or services, then the USPTO may terminate the commercial use of the trademark.

In some conditions, a business may petition to reactive a previously terminated or abandoned trademark through filing certain forms with the USPTO, although certain conditions have to be met. For example, suppose the trademark is no longer registered, and another entity properly registered the trademark or one similar enough to the abandoned one. In that case, the original owner may not be able to register the trademark because it is too similar to a trademark already registered in conjunction with the same type of goods or services.

Acceptable Specimen Submissions for a Trademark Application

The specimen requirements for a trademark application with the USPTO are stringent. One specimen is required for each class of goods or services the business owner is registering, and the mark must be used in association with all the goods or services on the application. Proof must be in current use and be demonstrated to be used for goods or services currently sold within the United States. Proof that the trademark is used in the commercial sale of the products in another country is insufficient for a specimen sample.

Any proof for the trademark application must show that the trademark and goods or services are so related that an association between the two is certain. However, delivery notes, invoices, and brochures are not acceptable proof of goods. They may be used for proof of a specimen for a service, though. Services, because they are of an intangible nature, cannot have the trademark affixed to them as consumer goods can. Therefore, the specimen for proof of commercial use for services can include advertisements, website printouts or screenshots, or other promotional materials that list the services rendered and the trademark in conjunction with one another.

Advantages of Working with an Experienced Intellectual Property Lawyer

An intellectual property lawyer with experience in patents and trademarks can help ensure that your application and proof are correct and that all needed documents are submitted on time with the USPTO. If you need help drafting and submitting your registration for a trademark for goods or services in the U.S., including properly proving commercial use, we can help. Contact Grabbe Law Office today by clicking here or call us at (785) 621-4711 to learn how our intellectual property attorneys can help protect your business and brand. 

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Julie Grabbe

Julie Grabbe

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