The Meaning of “Use,” and Proving it to Get Federal Registration

by Carlton Fields
Contact

[author: Jill Sarnoff Riola]

When you file an application to register a trademark (or service mark) in the United States Patent and Trademark Office, you must show you’re actually using the mark “in commerce” on the specific goods or services listed in the application before the actual registration will issue. You can file the application before you use the mark, but you won’t get your registration until you do.

What is “Use”?

“Use” means actual commercial use in interstate or international commerce of the trademark on, or in connection with, all of the specific goods or services listed in the application.

  • Commercial use is the actual sale or offer for sale (or rent) or distribution of all of the specific goods or services listed in the application in the normal course of business. The United States no longer recognizes “token use,” a one-time use made solely to comply with the use requirement.
  • Commercial use can be either interstate (between two or more states) or international (between the United States and one or more other countries). International commerce that doesn’t include the United States will not qualify. 
  • Use of the mark on any goods or services not listed in the application will not qualify.
  • The mark must be in commercial use on all goods or services listed in the application. If it’s not, you can delete the “non-use” goods (you can’t add them, though), you can split the application and get a registration only for the “use” goods, or get an extension of time to file proof of use. 
  • With the following exceptions for situations where the consumers themselves are frequently from out of state, use in just one state does not qualify:
    • Internet use (goods are purchased through the website or the services are described on the site)
    • Restaurants
    • Retail stores (and their goods) located in airports or on cruise ships

What Must be Shown to Prove Use?

“Proof of Use” means some tangible means of showing that the mark is being used as a trademark or service mark on or with the specific goods or services listed in the application. Even though the mark must be in use on all of the goods or services listed in the application, you only need to provide proof of use for one of the items listed, not all of them. The USPTO requires a declaration verifying use on all the goods, but only requires one specimen of use.

Acceptable specimens of use always have the mark on them and clearly relate to the specific goods or services listed in the application.

  • Acceptable specimens of use for goods
    Packaging for the goods
    Labels on the goods
    Hang tags on the goods
    Web page showing the mark and the goods, where consumer can purchase the goods on the website
    POP materials
  • Acceptable specimens of use for services
    Advertising or promotional materials that clearly reference the services
    Business cards/stationery (as long as it references the services)
    Menus
    Web page that clearly shows the mark and describes the services
  • Not Acceptable
    Use only as a trade name in an address
    Use only in the domain name of a website
    Use on any services other than as listed in the application
    Use that doesn’t clearly relate to or reference the specific services in the application

What is “First Use”?

There are two types of First Use: (1) anywhere; and, (2) interstate/international commerce.

First use anywhere means the first date the mark was commercially used on any one of the goods or services listed in the application even if it wasn’t in interstate or international commerce. For example, the first use anywhere can be a local sale between parties in Orlando and Tampa.

First use in commerce means the first date the mark was commercially used in interstate or international commerce, for example, a sale between parties in Miami and Atlanta.

Those two dates can be different or the same.

  • If the first use was on January 1, between parties in Orlando and Tampa (intrastate), and then on April 1 between parties in Orlando and Atlanta (interstate), first use anywhere is January 1, and first use in commerce is April 1. 
  • If the first use was March 1 between parties in Orlando and Atlanta, then both the first use anywhere and first use in commerce are March 1.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Carlton Fields | Attorney Advertising

Written by:

Carlton Fields
Contact
more
less

Carlton Fields on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.