Once you have obtained a U.S federal trademark registration, you must take certain steps to maintain the registration or else you risk losing your trademark protection. In this article, we discuss a key step in maintaining your federal trademark registration—showing use of your trademark.
Our last article explained that certain post-registration documents and fees are required to maintain a U.S. trademark in force. In this article, we discuss the requirements for filing the Affidavit of Use under Section 8, and the specimens that go along with the Affidavit of Use.
The Affidavit is under Section 8 (or 71 if an international registration). The Affidavit (or declaration) of Use must identify the trademark by registration number; be timely filed and include a verified statement attesting to the mark's use in commerce during the applicable time period. The goods or services must be specified to which the affidavit applies, as well as goods or services not covered by the affidavit. Excluded goods or services will be deleted from the registration unless the nonuse is shown to be excusable. The Affidavit must state that the registered mark is in use in connection with the covered goods and services.
If the statutory requirements are met, a Section 8 Affidavit can be combined into one filing with a renewal application and an optional incontestability affidavit, which shields the registrant from descriptiveness challenges after a period of five years of continuous use without adverse claims.
Each continued use filing must include one specimen per registration class showing use of the mark in connection with one of the goods or services in the class. Acceptable specimens for a Section 8 or 71 Affidavit may include a label, tag or container associated with the goods. A photograph showing the mark imprinted on the product can be an acceptable specimen. If the mark is registered as a service mark, acceptable specimens may include, e.g., a magazine advertisement, menu, letterhead, invoice or other material that shows the mark in the sale or advertising of the services. The trademark specimen must exhibit an association between the registered mark and the goods or services covered by the registration.
If a registered mark is not in use due to "special circumstances" that excuse the nonuse, the mark's owner can fulfill its Section 8 or 71 obligation and keep the registration from being cancelled. By filing an Affidavit of Excusable Nonuse to establish the necessary special circumstances, sufficient facts must be demonstrated for each class of the registration's goods or services not in use and that the nonuse is both temporary and beyond the owner's control. Special circumstances may include war, trade embargo, natural disaster or illness of the owner, if the owner is indispensable to the business. The basic requirements for a nonuse affidavit are the same as those for the use affidavit.
Next up we will cover trademark registration renewals and optional submissions for trademark registrations.