Fixated on “Affixation”: Navigating the US’s Tricky “Use” Requirement

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Unlike most of the world, the United States Patent and Trademark Office (USPTO) requires trademark owners to demonstrate actual evidence of use of their marks in order to register and/or maintain their trademark rights.  For domestic trademark owners, this “use” requirement is raised at the application stage as U.S. trademark owners are required to file evidence of use before the office will issue a registration.  Non-U.S. filers who seek registration in the U.S. may be able to bypass this initial evidence of use requirement at the initial application stage if the U.S. application is based on an extension of the trademark owner’s foreign trademark rights.  However, both domestic and foreign trademark owners are required to file evidence of use at both the maintenance deadline – between the fifth and sixth year after registration – and renewal deadlines – file every 10 years after registration.

What exactly is “evidence of use” in the U.S.? The answer is likely far more specific than you may think.  The short answer is the USPTO only recognizes current marketplace evidence showing the applied for or registered mark affixed to the goods and services claimed in the application or registration.  But what qualifies as “affixation” depends on whether the owner is filing evidence of use for goods or services:

Affixation of the Mark to Goods (i.e. International Trademark Classes 1-34)

In general, the trademark must be physically attached to the goods in order to meet the “affixation” requirement and be recognized as acceptable evidence of use.  Traditional examples of appropriately affixed trademark usage include the mark used directly on the goods or on labels, tags, packaging, installation instructions packaged with the goods, and product stampings.  The USPTO will also accept screenshots showing the mark displayed in connection with certain electronically provided goods – such as downloadable computer programs, videos, or audio recordings – as evidence of use in connection with those goods.  In addition, the office will accept electronic or physical displays of the mark directly associated with offering the sale of the goods as evidence of use.

Affixation of the Mark to Services (i.e. International Trademark Classes 35-45)

The affixation requirement for service marks is often a bit easier to satisfy and generally requires only a sample of promotional material using the mark in connection with the sale or advertising of the services recited in the application. Typically, this means a website promoting the services and displaying the mark.  But really, any marketing material, including brochures, flyers, emails, signage and presentations, should be acceptable provided they are real-world examples the trademark owner uses to promote its services to clients.

In addition to satisfying the affixation requirement, trademark owners should be aware that while only one example of use is required per class of goods or services, any declaration of use – at the application, maintenance, or renewal stage – incorporates a declaration under oath that the owner is using the mark with each and every item listed in the application.  Hence, the registrant should feel confident that, if requested, it could produce samples of actual affixed trademark usage for each and every item in the application/registration.  This is important as the USPTO has an audit program and can – and often will – randomly select registrations during the maintenance and renewal stages for additional examination as to use of the registered mark with ALL of the listed goods and services in the registration.  More information about the U.S.’s audit program can be found here.

Before filing a U.S. application, trademark owners should consider the affixation requirement and whether they will be able to satisfy such as part of their application drafting strategy.  For example, if a trademark owner plans on launching a branded online store to sell widgets, but has no plans on including the desired trademark on packaging, labels, tags, or in any other way recognized by the office as trademark affixation for goods, it may want to consider filing its application in a way that covers retail services for widgets rather than claiming the widgets themselves.

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.

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