Trademark Use-in-Commerce Audits
The most valuable asset a business has is its trademark. Trademarks are the core of the modern concept of branding, and they are used to identify the business.
In order to register your trademark with the US Patent and Trademark Office (USPTO), you must be using that mark “in commerce.”
Although you can apply for registration before using a mark through the intent-to-use application, the registration won’t be issued until you provide evidence of your use.
Once your mark is registered, you’ll also be required to file certain maintenance documents with the USPTO, and these require you to state that you’re using the mark for all of the goods or services covered by your registration in commerce, though you’re only required to submit one specimen per class.
The USPTO has implemented audit procedures in connection with this process, and it has indicated that it will audit about 10% of registrations after Declarations of Use are filed.
If your registration is chosen for audit, you will be required to submit proof of use for two or more goods or services in each class.
If you then delete a good or service, or if you don’t provide proof of use for the requested items, the USPTO will require proof of use for all remaining goods and services in all classes of the registration.
For goods, the criteria for proof of use is stricter than the criteria for a specimen. Proof of use requires additional evidence that establishes that you actively use your mark in commerce with the identified goods. For services, proof of use is the same as a specimen.
As you can see, it’s important to understand exactly what “use in commerce” means, so you can protect your trademark rights.
The Trademark 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.”
That is, a few token sales won’t count. Nor will a sham transaction, such as a sale to your brother. Rather, you must be selling your product or service with the intent of establishing or maintaining a business.
The Trademark Act goes on to explain that a mark is considered to be in use in commerce on goods when it’s placed directly on the goods, on their containers, on the displays associated with the goods, or on the tags or labels on the goods.
If the nature of the goods makes this impractical, then the mark may be on documents associated with the goods or with their sale.
In addition, the goods must be sold or transported in commerce.
The Trademark Act states that a mark is deemed to be in use in commerce on services when it’s used or displayed in the sale or advertising of services and the services are rendered in commerce.
While the Trademark Act uses the term “commerce,” it actually means “interstate commerce,” not just local sales, though, in certain situations, local sales will be considered “in commerce” if they affect interstate commerce. An example is a restaurant or gas station frequently serving out-of-state travelers.
When you apply for trademark registration, you’ll need to provide the USPTO with the “date of first use anywhere” as well as the date of first use in commerce, so you’ll want to keep track of both dates.
First use anywhere means what it sounds like: the date you made any bona fide sale, even if it doesn’t affect interstate commerce. The date of first use anywhere cannot be later than the date of first use in commerce.
There are some online services purporting to assist with trademark registrations for a fee. Unfortunately, these companies often provide inferior work, and many of them have been cited by the USPTO as scams that should be avoided.
Please feel free to contact us if you have any questions about, or need assistance with, registering or enforcing your trademarks.
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