The Difference Between Bona Fide Use and Token Use in US Trademarks

Applicants filing under Section 1(a) (the Use-in-Commerce basis) must demonstrate commercial use at the time of filing. On the other hand, Intent-to-use applicants under Section 1(b) must demonstrate it before registration, through an Allegation of Use or a Statement of Use.

In each case where a declaration of use is filed, the declaration is a sworn statement to a federal agency. A mark that has not been genuinely used in connection with real goods or services offered to real customers does not qualify for registration or maintenance, regardless of how the paperwork is prepared.

Bona fide use means genuine commercial use of the mark in the ordinary course of trade. This means your mark identifies real goods or services, and is offered to actual US customers, who are making real purchasing decisions in connection with the mark.

Section 45 of the Lanham Act defines use in commerce as the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. The last portion of that definition is meant to deter applicants from manufacturing single shipments or nominal transactions solely to establish a use date.

However, even this standard is relative to your industry. For example, a pharmaceutical company waiting for approval may make a small number of shipments to clinical investigators, which would qualify as commercial use. So would a software company with paying subscribers accessing a branded platform.

What wouldn’t qualify is use that is purely manufactured to bypass a legal requirement, rather than to conduct business.

Token use is the use of a mark made merely to reserve trademark rights. The most common forms involve fabricating sales records, shipping goods to a related company only to have them returned, or selling small quantities at nominal prices to friends or family members to create the appearance of commercial activity.

None of these would pass the bona fide bar, regardless of documentation. It’s not about the volume, revenue, or the quality of the paperwork, but more about whether a genuine customer made a real purchasing decision in connection with the brand.

This seems minor, but token use crosses into fraud when an applicant swears to the USPTO with knowledge that their use wasn’t genuine to begin with. That sworn statement is the point at which the legal exposure shifts from a vulnerability in the registration to a misrepresentation to a federal agency.

Examiners do not verify the validity of commercial use declarations in every single application. An application supported by token use can (and often does) clear examination, receive a registration certificate, and appear on the Principal Register with all the presumptions that registration carries.

But that registration doesn’t confirm or validate the underlying use. If a competitor discovers that the use was not genuine, they can petition to cancel your registration at any time, and in that proceeding, the sworn declaration that was originally filed becomes integral. If the petitioner can demonstrate that the declarant knew the use was not genuine at the time of signing, the registration is not merely cancelled. The filing constitutes fraud on the USPTO, with consequences that extend beyond the loss of the registration.

Reebok had stopped selling RBK-branded goods around 2010. When a renewal deadline arrived in 2012, the registration required a sworn declaration of continued bona fide use. Rather than allow the registration to lapse, Reebok placed RBK stickers inside the box lids of its Iverson-branded shoes: a real, actively marketed product line, sold in significant volume, advertised and invoiced entirely under the Iverson name, with the stickers positioned where no customer would see them before or during a purchase.

The court found no bona fide use. The volume of Iverson shoe sales was not in dispute, but the court held that volume is only relevant if the mark was actually used to identify the product to a customer. No customer had ever made a purchasing decision in connection with RBK. The court ruled that the 2012 renewal was a fraud on the USPTO, and that communications between Reebok and its counsel concerning the renewal fell under the crime-fraud exception to attorney-client privilege.

Applicants must keep in mind that the bona fide use standard applies at every stage where a sworn declaration is filed, including the initial use-based application, any Allegation of Use or Statement of Use on an intent-to-use application, and every Section 8 declaration filed after registration. Each carries the same legal weight.

Applicants who aren’t sure whether their commercial activity constitutes bona fide use should consult a legal professional before submitting their specimens and declaration to the USPTO. The standard is not met by transaction volume, documentation quality, or the fact that the examination proceeded without objection. It is met by real customers making real purchases.

1. What is the difference between bona fide use and token use?

Bona fide use is genuine commercial use of a mark in the ordinary course of trade, meaning real goods or services offered to actual customers who associate the mark with what they are buying. Token use is manufactured activity designed to satisfy the legal requirement, such as nominal sales to friends or family, or shipments to affiliated companies. Token use can survive examination, but it cannot survive a cancellation proceeding.

2. Can a registration based on token use be cancelled after it has been granted?

Yes. Any party with standing can petition to cancel a registration at any time on the grounds that the supporting use was not bona fide. If the petitioner establishes that the declarant knew the use was not genuine when signing the declaration, the registration will be cancelled and the filing may be treated as fraud on the USPTO.

3. Does the bona fide use requirement continue after registration?

Yes. It applies to every declaration of use filed during the life of the registration, including each Section 8 declaration filed at maintenance. Registrants who have reduced or modified their use of a mark between filings should confirm that the use still meets the standard before signing the declaration.