Proof of use for trademark registration is something that’s often misunderstood by people who choose to file their own trademark applications. It’s not uncommon for people to contact me after receiving a trademark office action from the United States Patent and Trademark Office (USPTO) indicating that registration of their trademark is being refused because the proof of use they submitted (referred to as “specimens”) is insufficient or improper. This trademark specimen refusal causes significant delays in registering their trademark and, in some cases, can even lead to their trademark application going abandoned and having to start the trademark registration process all over again.
When is Proof of Use Required?
Unless you own a foreign trademark registration and are eligible to register your trademark under Section 44(e), proof of use for trademark registration is required at either (1) the time you file your trademark application, (2) the time you file the Statement of Use, or (3) the time you file an Amendment to Allege Use.
As you may know, you have the option of filing your trademark application under Section 1(a) (use in commerce) if your trademark is already being used in commerce in connection with the advertising and sale of your products/services. When you file your in-use trademark application, you’ll need to submit proper specimens showing use of your trademark.
On the other hand, if your trademark is not yet in use, you can file your application under Section 1(b) (intent to use). This reserves your trademark while you continue to develop your products/services. If you file your application on an intent-to-use basis, you’ll later need to submit specimens and file either the Statement of Use or an Amendment to Allege Use, which demonstrates to the USPTO that you’re using your trademark in commerce. I strongly encourage you to read my previous article about use in commerce so that you fully understand its meaning. This will help to avoid making mistakes that could lead to an expensive and frustrating trademark opposition or trademark cancellation being filed against you.
What is Proof of Use for Products?
The USPTO accepts proof of use in the form of specimens. The specimens are submitted electronically with an in-use trademark application, the Statement of Use, or an Amendment to Allege Use. They must legibly display the trademark exactly as shown in your trademark application.
Below are some good examples of specimens that would be suitable as proof of use for products:
- Photographs of the product
- Photographs of the product packaging
- Instructional manuals or user guides that are distributed with the product
- Photographs of labels or tags showing the trademark (they must be affixed to product)
- Photographs of point-of-purchase displays showing the products associated with the display
- Website pages that (1) show the product, (2) display the trademark in close proximity to the product, and (3) provide a way to purchase the product (usually online)
What is Proof of Use for Services?
As far as proof of use for services is concerned, here are some solid examples of specimens that would generally be appropriate:
- Flyers, brochures, leaflets, and other advertising materials that have been publicly distributed
- Website pages that promote the services
- Radio advertisements
- Television commercials
- Photographs of signage
What is Not Proof of Use?
Here are some common examples of specimens that would not be acceptable as proof of use for products:
- Advertisements and marketing materials (e.g. brochures, leaflets, flyers, PowerPoint presentations, etc.)
- Radio and televisions commercials
- Website pages that don’t meet the criteria mentioned earlier
- Mock-ups or digital renderings of the products or product packaging
And, here are some common examples of specimens that would not generally be acceptable as proof of use for services:
- Business cards
- Stationery
- Letterhead
- Promotional merchandise (e.g. pens, mugs, key chains, coasters, etc.)
Do You Have Questions Regarding Proof of Use?
I’m experienced US trademark attorney Morris Turek. I would be glad to answer any questions you still may have about proof of use for trademark registration and the importance of submitting appropriate specimens. I may be reached via email at morris@yourtrademarkattorney.com, by phone at (314) 749-4059, or through the contact form located below. I look forward to speaking with you soon.