The process of trademark registration in the US is a little bit different and potentially more difficult to navigate than it is in other countries. In particular, it is required that the use of the trademark is shown to the USPTO before the trademark can be fully registered.
When filing a trademark application in the US, business owners must specify the legal reason for why they are allowed to federally register a trademark. This is known as a filing basis. There are multiple filing bases and business owners must satisfy all the legal requirements for the filing basis that they choose. The most common are use in commerce and intent to use.
Use in commerce
The trademark could be regarded as 'being used in commerce' as long as it is genuinely being used with particular goods and/or services defined on the trademark application.
A trademark is considered to be used in commerce with goods when:
the trademark is placed on the goods, packaging for the goods, or displays associated with the goods (including web page displays), and
the goods are actually being sold or transported in commerce in the US.
Similarly, a mark is considered to be used in commerce for services when:
it is used or displayed in the sale or advertising of services and the services are rendered in commerce, and
the person rendering the services is engaged in commerce in connection with the services.
Both conditions have to be met simultaneously in either case. Furthermore, a suitable form of a specimen demonstrating the use in commerce needs to be supplied for all classes defined on the trademark application.
Intent to use
Alternatively, when the trademark is not yet being used with goods or services in commerce, the trademark application may be filed with an 'intent to use'. However, this does not mean that the trademark will be registered without the necessity of the use of the mark in commerce being established first. The applicant will be required by the USPTO to show that the mark is being used in commerce later on in the proceedings. The USPTO will issue a notice of allowance about eight weeks after the date the trademark was registered. The applicant then has six months from the date of the notice of allowance to either:
Use the trademark in commerce and submit a statement of use form; or
Request a six month extension of time to file a statement of use (extension request). Both the provision of a specimen of use and the prolongation of this period are subject to an additional fee.
Acceptable forms of a specimen of use
Use in commerce is demonstrated by means of a so-called specimen which is a real-world example of how a particular trademark is being used with goods or services. A wide range of these specimens is accepted by the USPTO, including product photos, screenshot of the website or a platform, and marketing materials displaying the mark on the goods/in connection with the services.
It is important to note that the specimen should provide a proof of a genuine use of the trademark. It means that websites put together for the sole purpose of displaying the mark without any connection to the relevant goods and /or services are not admissible. Similarly, no artificial product photographs rendered digitally for the sole purpose of the trademark being displayed on the goods without at the same time having a genuine counterpart in the physical world.
Need more clarification before you are ready to proceed? No problem at all! Please schedule a free consultation with us and our representative will gladly walk you through the process, addressing any concerns you might have!
