Trademark Rights Can Extend Forever
Use of a trademark by a business gives limited rights to the trademark user just by being used publicly in combination with particular products or services. Before the trademark rights can be proved, however, the trademark owner needs to show proof of the use. This is true for local, state and even federal trademark rights. Federal trademark registrations give significant trademark rights to the owner throughout the United States. Those rights can be extended indefinitely so long as the trademark owner continues to use the trademark and files the appropriate trademark renewals.
What is a Trademark Statement of Use or Declaration of Continued Use?
As part of securing a federal trademark registration and renewing the registration, the trademark owner is required to submit proof that the trademark owner is using the trademark publicly in combination with the goods and/or services listed in the application. A Statement of Use, and Declaration of Continued Use, requires that the trademark owner submit an example of trademark use to the Trademark Office (called a “specimen”) for each trademark class of goods and/or services. Although the Trademark Office initially only requires the applicant to submit a single specimen for each class, it is wise to gather and submit the specimens of use for every type of goods and services listed in the application. This is because the Trademark Office can challenge trademark use and require proof of use for all goods and services listed. If the evidence of use is not available when requested, the registration will be forfeited, and the trademark owner penalized. Gathering the specimens and evidence at the time the Statement of Use or Declaration of Continued Use is filed ensures that all of the goods and services in the application are supported, and that the trademark registration is not at risk.
What Specimens Should Be Used?
The Trademark Office has different requirements and preferences for what is needed to show proof of trademark use for particular types of goods and services. In the end, the trademark owner only needs to show use of the trademark as an actual trademark in association with the goods and services. However, submitting the types of specimens the Trademark Office prefers will save a lot of time and money in the negotiations with the Office.
Here are some specific examples of common types of goods/services and the specimen types that are most easily accepted by the Trademark Office and are preferred as Statement of Use specimens:
Services for Others: Trademark use associated with services for others can be proven through screen captures of the website, business cards, advertising fliers, blog posts, social media posts, and almost anything showing the trademark used in association with the services. The types of specimens accepted for this category are more broad than they are in other categories.
Online Store: To show trademark use for an online store, the website can be used, showing sales pages of the types of goods sold through the site.
Physical Store: To show trademark use for a physical store, a photograph of the front of the store showing the trademark or displays within the store showing the trademark are best. Alternatively, fliers advertising the store can be used.
Clothing: The specimen should be an example of wrapping, a clothing hang tag, a product tag (like a neck back tag for a shirt or an inside product label for pants), a clothing point-of-sale product display or a website sales page clearly showing the trademark used as a trademark separate from being a decorative image printed on the clothing. If the trademark is only used by printing the trademark on the front or back or sides of the clothing, the Trademark Office considers this to be a decoration. In that situation it is difficult to argue to the Trademark Office that it is trademark use and not just a pretty picture.Miscellaneous Products: For various physical products other than clothing, the trademark specimen needs to show on the physical product itself, on the product packaging, on a point-of-sale product display or a website sales page clearly showing the trademark used in association with the product.
Overcoming trademark rejections and deciding how to submit the right specimens to protect your trademark rights can be difficult, but making sure it is done right the first time will save you thousands of dollars and significant hassle in the future. Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about trademarks, trademark office actions, trademark specimens, statements of use, or any other intellectual property protection or strategy needs.