How to Prove “Use” of a Trademark

The world of trademarks can be cumbersome, confusing, and full of legalese.  Our trademark clients often ask us questions regarding the terms of art that we frequently reference in our communication: “use in commerce” and “specimen of use.”  In this article we will try to shed some light to what exactly constitutes use of the mark in commerce and what we mean when we request that you provide us with a specimen of use to support our filing with the U.S. Patent and Trademark Office (“USPTO”).

One of the prerequisites to the registration of the mark in the United States is use of the mark in commerce in association with all goods and/or services listed in your trademark application.  Use in Commerce is defined in the Trademark Act as a “Bona Fide Use of a trademark in the ordinary course of trade.”   For goods, use in commerce usually refers to the product being sold or transported within the Unites States in the ordinary course of business.  For services, use in commerce refers to the services being rendered within the Unites States in connection with the mark.  Under both scenarios, the mark must be used in a sufficiently obvious way to act as a source identifier.

In practical terms, if you make a single shipment of goods or a single sale of an item just to satisfy the requirement, it will likely be considered a “Sham Transaction” and will not be sufficient.  While you are not required to demonstrate some extraordinary numbers, the degree to which you exercise a good faith effort to establish a trade is certainly taken into consideration by the USPTO.  The bottom line is that the rationale behind the sale or a transaction (in the case of rendering services) is important.  Don’t do it just to satisfy the letter of the law to earn trademark rights but do it for the purpose of conducting business.

What is an acceptable “specimen” to demonstrate use of the mark in commerce?

A specimen is a real-life evidence of how you are actually using your mark in the marketplace in association with the goods and/or services listed in your application.  It is a sample that is submitted to the USPTO to satisfy the requirement of “use in commerce.”

For goods, an acceptable specimen must demonstrate a direct association of the mark with the goods listed in your application.  To do that, the applied-for mark must be either displayed on the product or on external materials such as tags or packaging.  If a product is available for purchase online, a snapshot of applicant’s webpage depicting the mark as used in association with the goods listed in the application is acceptable.  In most cases, online point-of-sale displays suffice as an acceptable specimen of use.  Advertising and marketing materials are generally not acceptable specimens for goods unless they incorporate means for ordering or purchasing those products.  Other examples of unacceptable specimens for goods are as follows: invoices, internal communications referencing the mark, letterheads, press releases, business cards, and the like (see below how some of these examples are acceptable to demonstrate use of the mark in association with services).  For software products such as mobile apps, proof of use must be post-launch of the product as opposed to mere marketing, crowdfunding campaigns, pre-sales, etc.  Generally, a screenshot of a software launch screen or a screenshot of a webpage with enough information to download the software and the trademark appearing on the page suffice.

Similar to the above, an acceptable specimen for services must demonstrate how the mark is actually used in commerce in association with the services listed in the application in a way that directly associates the mark with the services.  An acceptable specimen could be a printout of your business webpage where you offer your services, photographs of a business sign at the location where the services are actually rendered, an advertisement, a brochure, or a promotional material, which show the mark and list the services, or a service vehicle showing the mark.  Some other examples of acceptable specimens for services include TV and radio commercials, materials used in the rendering of the service e.g. restaurant menu, invoices showing a direct association between your mark and the services you offer under the mark, or a business card listing your services.  Items that are merely depictions of the mark or digitally created or altered images do not demonstrate actual use of the mark in commerce and, therefore, are unacceptable.  Some of the examples are as follows: an artist’s rendering, a printer’s proof, a digital image or a mockup of a specimen, or a computer illustration.

As a side note, when you submit to us a “specimen of use” to demonstrate “use in commerce,” please make sure the mark depicted in the specimen is identical to the mark that you applied for.  Often times we see that the marks are not substantially the same, and the filing will result in the refusal of the specimen.  As practice shows, “close enough” ain’t gonna fly when it comes to Uncle Sam!