Siavage Law Group

THE CONCEPT OF "USE" IN THE REGISTRATION OF UNITED STATES TRADEMARKS

The federal trademark registration system in the United States, as derived from the British system, is based on the use "in commerce" of the mark. The United States Patent and Trademark Office (the "PTO") will not grant or maintain registration for a mark that is not actively being used in connection with the goods or services for which it is registered. This is because there are various exclusive rights that appertain to a federal registration, and it would not be economically rational or equitable for a party to hold those rights in a mark it wasn’t using when those rights potentially hold great value for another party that needs to use the mark in the marketplace.

The United States trademark applicant has a number of choices to make about "use" in the trademark application process. Some will be dictated by the applicant’s stage of development, some by the circumstantial need to reserve a space in the market in advance, and some by the amount of funds immediately available. Following is a discussion of elections that can be made according to the use the client has made or will make of the mark:

Application Based on Actual Use of the Mark

The most expedient and cost-efficient trademark application that can be made is one based on "actual use" in commerce of the mark. Section 1(a) of the United States Trademark Act (the "Lanham Act," as amended) governs such applications.

In order to file an "actual use" application, the applicant must be able to provide a "specimen of use" of the mark showing that the mark is actually being used on as-sold products. It is generally best if this specimen shows the mark actually affixed to the goods as, for example, a tag or label. If this is not possible or practical because of the nature of the goods (e.g., certain kinds of embedded software where the trademark is not plainly visible to the consumer), the PTO may accept a specimen showing use of the mark in advertising materials or in a promotional display.

An actual use application must also contain certification of two important dates: the date of "first use anywhere" and the date of "first use in commerce" for the mark. The date of first use anywhere provided must always be earlier than or equal to the date of first use in commerce, and is typically the date that the mark first appeared, for example, in a pricing list or user interface. The date of first use in commerce is, generally speaking, the date on which goods or services are first sold with use of the mark in interstate commerce (so that the transaction is subject to federal regulation).

If there were to be a conflict between different applicants for the same or confusingly similar marks upon PTO review, the dates supplied by each party would be compared as part of the effort to determine superior rights. An applicant must supply an affidavit as to the truth of the dates supplied and the actual use of the mark in commerce.

Application Based on Intent to Use the Mark

If the applicant cannot yet fulfill the requirements of an actual use application, it may instead apply solely on the basis of a bona fide intent to use the mark pursuant to Section 1(b) of the Lanham Act. This method will help secure market territory for the applicant who needs to be a first mover in a market segment, but whose mark has not yet been made integral to the sale of established products and services. Under an intent-to-use application, the PTO examining attorney assigned to the application will evaluate, and, if passable, issue a "notice of allowance" for the mark. At that point, the applicant will have six (6) months from the notice date (unless further extensions are sought and paid for) to (a) provide the dates of first use anywhere and first use in commerce, and (b) give a specimen of the mark as used in commerce.

An intent-to-use application will necessarily take longer to mature into a registration (often in the neighborhood of 18-22 months) than a use-based application, and will incur moderate incremental additional PTO filing fee expense and legal costs. That said, probably 30% to 40% of the trademark applications we file on behalf of our clients are intent-to-use filings, and they are viable tools for forward-looking clients who want to reserve rights in their intellectual property from the outset and prevent infringing uses.

Other Countries’ Policies on the Concept of Use in Trademark Registration

As a side note, not all countries predicate their trademark registries on the concept of trademark use. In certain other countries, such as China, there is a race to be the first to register a mark, whether the applicant is using or has plans to use the mark. The "race-to-register" system in China and similar jurisdictions promotes a phenomenon similar to the cyber-squatting witnessed prior to legislation with regard to Internet domain names. Our trademark clients will often receive "phishing" faxes stating that another entity has just filed a trademark application in China for a mark to which our client holds United States rights, and suggesting that our client needs to take action if it wants to acquire or preserve any Chinese rights in the mark.

As you will note from the above discussion, the extent to which an individual or business has exercised its trademark in the marketplace can have a significant impact on decisions regarding the protection of the mark. This factor is to be balanced with the need to prevent any other party from securing superior rights in a mark that is not yet heavily used, but could be central to your brand identity in the future. For the sake of readability, we have provided several generalizations above and omitted several nuances that arise in certain situations. Please let us know if we may be of help in discussing specific circumstances relating to your trademarks and other intellectual property.

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