Use in Commerce Trademark: The Process & Timeline

Use in Commerce Trademark: The Process & Timeline

Trademarks are essential tools for businesses looking to protect their brand identities and distinguish their products and services in the marketplace. When it comes to registering a trademark in the United States, understanding the concept of “use in commerce trademark” is crucial. In this comprehensive guide, we will dive deep into the world of use in commerce trademarks, providing you with valuable insights, requirements, and real-world examples. So, let’s embark on this trademark journey together.

What is a "use in commerce trademark," and why is it crucial for trademark registration in the United States?

A “use in commerce trademark” refers to the genuine use of a trademark in the ordinary course of trade. It is crucial for trademark registration as it establishes the authenticity of a mark’s usage in connection with goods or services, facilitating brand protection.

What are the key requirements for registering a use in commerce trademark in the United States?

The five essential requirements for a use in commerce trademark include a statement confirming use, dates of first use anywhere and in commerce, specimens for each class, and verification through an affidavit or declaration.

What is the significance of the dates of first use in the trademark registration process?

Dates of first use, anywhere and in commerce, are vital for establishing the validity of a trademark. They must be provided to demonstrate the genuine and bona fide use of the mark in the ordinary course of trade.

How do specimens play a role in the trademark registration process?

Specimens serve as tangible evidence of how a trademark is used in commerce with specified goods or services. They validate the claims made in the application and help consumers identify products or services in the marketplace.

What is the process for trademark registration based on use in commerce?

The process involves multiple steps, including application submission, USPTO review, publication, potential objections or opposition, and, if no opposition, final registration. It’s a comprehensive process involving compliance with legal requirements and potential challenges along the way.

Defining Use in Commerce Trademark

To kick things off, let’s define what a use in commerce trademark means. According to the Trademark Act, “commerce” encompasses various forms of trade that may be legally regulated by Congress. “Use in commerce” refers to the genuine use of a trademark in the ordinary course of trade. This definition covers interstate commerce, territorial commerce, and commerce between the United States and foreign countries.

use in commerce trademark infographic

A trademark is considered in use in commerce with goods when:

(1) The mark is affixed to the goods, their packaging, or associated displays (including webpages).

(2) The goods are actively sold or transported in commerce.

For services, a trademark is in use in commerce when:

(1) The mark is used in selling, advertising, or rendering services.

(2) The services are actively provided in commerce.

Now that we have a clear definition, let’s explore the five essential requirements for registering a use in commerce trademark.

use in commerce trademark definition

The 5 Requirements for Use in Commerce Trademark

(1) The Statement

“The mark is in use in commerce and was in use in commerce as of the application filing date.”

This statement is your declaration that your trademark is indeed in use in commerce and has been so from the application filing date.

(2) Date of First Use Anywhere on the Goods or Services

This date signifies when your mark was first used anywhere in connection with the goods or services specified in your application.

(3) Date of First Use in Commerce on the Goods or Services

This date specifies when your mark was first used in commerce concerning the goods or services mentioned in your application.

(4) Specimen for Each Class

A specimen is tangible evidence demonstrating how you use your trademark in commerce with the specified goods or services. Each trademark class you apply for requires a separate specimen. It must reflect the mark’s actual usage in connection with the goods or services and be in use as of the application filing date.

(5) Verification via Affidavit or Declaration

To reinforce your claims, you must provide verification in the form of an affidavit or a signed declaration under 37 C.F.R. §2.20, confirming the above statements and dates of use.

5 requirements for use in commerce trademark

Now that you understand the requirements let’s explore some real-world examples to see how businesses may or may not apply as a use in commerce trademark.

Real-World Examples: Use in Commerce Trademark or Intent to Use Trademark?

Example A: Based in the fashion hub of New York, GlamourCouture has been selling its branded clothing and accessories online since 2019. The business caters to customers across multiple states in the U.S. and also serves clients in France and Italy. In this case, GlamourCouture would file as a “use in commerce trademark” since they have been actively selling their goods in the U.S. and internationally.

Example B: FitLife Pros, a personal training duo operating in California, currently offers in-person training services at their gym in Huntington Beach. Their future plans include expanding their gym services to neighboring states. Initially, they would file as an “intent to use trademark” since they are planning to enter new states where they haven’t yet started operations. Once they begin training in these states, they can convert to a “use in commerce trademark.”

Example C: PixelCrafters, a recently launched web design agency, has already acquired three clients. Two clients are based in Oregon, and one is in California. Despite being in business for only two months, they have actively provided their services to clients. In this case, PixelCrafters would file as a “use in commerce trademark” because they have commenced their operations interstate and have clients to show for it.

** Any names or characters, businesses or places, events or incidents, are fictitious. Any resemblance to actual persons, living or dead, or actual events is purely coincidental. **
real world examples use in commerce trademark vs intent to use

Dates of First Use Requirements

Understanding the dates of first use is vital when applying for a use in commerce trademark. You must provide two specific dates:

(1) Date of First Use Anywhere: This date signifies when your mark was first used anywhere in connection with your goods or services, whether in the United States or elsewhere. It must be a bona fide use in the ordinary course of trade.

(2) Date of First Use in Commerce: This date marks the first use of your mark in commerce, specifically in a form of commerce that Congress can legally regulate. Again, this use must be genuine and in the ordinary course of trade.

These dates are crucial for establishing the validity of your trademark. Even if these dates happen to be the same, you must provide both of them. The U.S. Patent and Trademark Office (USPTO) assumes that the dates of first use apply to all the listed goods or services in a particular class, unless you specify otherwise.

use in commerce trademark dates of first use requirements

The Role of Specimens for Trademarks

Now, let’s delve into the importance of specimens in the trademark registration process. A specimen is essentially a real-life representation of how you use your trademark in commerce with the goods or services specified in your application. It serves as concrete evidence that your trademark is indeed in use and helps consumers identify your products or services in the marketplace.

For goods, a specimen could take the form of a label or tag attached to your products, product packaging displaying your trademark, or a webpage where customers can purchase your goods.

For services, a specimen may include advertisements, brochures, website printouts, or any promotional materials that showcase your trademark in connection with the services you offer.

Specimens play a pivotal role in providing tangible proof of your trademark’s usage, validating your claims, and ensuring that your trademark accurately represents your business.

use in commerce trademark specimens
DISCLAIMER:References to particular trademarks, service marks, certification marks, products, services, companies, and/or organizations appearing on this page are for illustrative and educational purposes only.

The Road to Trademark Registration

If the examining attorney at the USPTO finds no grounds for refusing your trademark registration and your application satisfies all legal requirements, your trademark will be approved for publication in the Trademark Official Gazette (TMOG). This weekly online publication serves as advanced notice to the public of the USPTO’s intent to register your trademark.

Approximately one month after approval, your trademark will appear in the TMOG. Within 30 days of the publishing date, anyone who believes that their business will be negatively impacted by your trademark registration may file an objection or “opposition.” This process is similar to a federal court proceeding but takes place before the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges responsible for reviewing and deciding such matters.

An opposition can potentially extend the time between the publication of your trademark in the TMOG and its final registration. However, if no opposition is filed within about three months after your trademark’s publication, the USPTO will officially register your trademark.

Use in Commerce Trademark Timeline

Step 1: Application Submission

– File a trademark application based on commerce use, receiving a USPTO serial number.

– Check application status via TSDR system or call 571-272-5400 or 1-800-786-9199 (option 1, then option 2).

– Progress to Step 2 in approximately six to nine months.

Step 2: USPTO Review

– An examining attorney reviews your application for compliance with federal law.

– Filing fees are non-refundable.

– Move to Step 3a or Step 3b in about one month.

Step 3a: Approval and Publication

– If your trademark meets requirements, it’s approved for publication in TMOG.

– TMOG notice provides a 30-day window for objections.

– Consider hiring an attorney if an opposition arises.

– Proceed to Step 8 after opposition period (about three months).

Step 3b: Office Action Issued

– If issues exist, an office action explains them.

– Respond within three months or request an extension.

– If no response is made, application abandons.

– Revive within two months or file a new application.

Step 4a: Timely Response to Office Action

– Submit a response addressing refusals and requirements.

– Await examining attorney’s review.

– Move to Step 5a or Step 5b in one to two months.

Step 4b: No Response, Application Abandoned

– Failure to respond within three months results in abandonment.

– Request an extension or revive within two months.

Step 5a: Approval and Publication (Again)

– If requirements are met, approve for TMOG publication.

– Objection period applies.

– Proceed to Step 8 after opposition period (about three months).

Step 5b: Final Office Action Issued

– If issues persist, a final office action is issued.

– Options include appealing, responding, or petitioning.

– Move to Step 6a or Step 6b in three months.

Step 6a: Appeal or Response

– File an appeal or respond to overcome final refusals/requirements.

– Failure to act results in abandonment.

– Proceed to Step 7a or Step 7b in one to two months.

Step 6b: No Appeal, Application Abandoned

– Failure to appeal or address issues within three months leads to abandonment.

– Request an extension or revive within two months.

Step 7a: Approval and Publication (Yet Again)

– If requirements are met, approve for TMOG publication.

– Objection period applies.

– Move to Step 8 after opposition period (about three months).

Step 7b: TTAB Appeals Processing

– TTAB processes your appeal if filed.

– Refer to TTAB resources for more information.

Step 8: Trademark Registration

– If no opposition or successful appeal, the trademark is registered. You can now use the ® symbol.

– Ongoing maintenance requirements must be met. Read our blog post about Trademark Renewals for more details.

Conclusion

Navigating the world of trademarks, specifically use in commerce trademarks, is a crucial step for businesses looking to protect their brand identities and secure their place in the market. Understanding the requirements, dates of first use, and the significance of specimens is essential to ensure a smooth trademark registration process.

Remember, trademarks are valuable assets that help consumers identify and trust your products or services. So, whatever your business may be, understanding the use in commerce trademark process can be a game-changer for your business. By following the guidelines and requirements laid out by the USPTO, you can confidently build and protect your brand in the ever-evolving world of commerce.

The information provided on this site is for general informational purposes only. All information on the Site is provided in good faith; however, we make no representation or warranty of any kind, express or implied, regarding the accuracy, validity, or completeness of any information on the Site. The Site cannot and does not contain legal advice. The legal information is provided for general informational and educational purposes only, and is not a substitute for legal advice. Consult a licensed attorney for legal advice.

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