Newcomers to trademarks are often surprised (and frequently frustrated) to learn that unlike business names and domain registrations, trademarks must actually be used in order to establish rights and are neither acquired nor maintained merely by registration. United States trademark rights are use-based. Common law rights are established and maintained by actual use of a mark in connection with goods and services. Although an application for a U.S. registration can be filed prior to use (“intent to use”), actual use in interstate commerce is required for the issuance and maintenance of the registration. To maintain a registration, proof of the continued use of the mark is required between the fifth and sixth year after registration and with each renewal of the registration (every 10 years).
“Use” for purposes of establishing and maintaining trademark rights generally means bona fide use in the ordinary course of trade and is the same standard for purposes of obtaining and maintaining a federal registration. The use must be more than nominal. First use should not be a one-off sale created solely for obtaining a registration, but should be initiation of use in the ordinary course for the relevant goods or services. Ongoing use for maintenance purposes should be regular and continuous in the ordinary course, although temporary non-use may be excused for reasons such as a change in governmental regulation or authorization, product modification or redesign, supply line disruption, labor dispute, etc., provided that the owner of the mark at all times has a bona fide intention to resume use.
An owner’s rights in a mark may be terminated, and an applicable registration cancelled, at any time for non-use of the mark. Under federal law, non-use for three consecutive years creates a presumption of abandonment placing responsibility on the owner to prove bona fide use or an excusable suspension for the relevant period in question. Historically, the risk of the loss of rights for non-use has been limited to private action, either as a defense to a claim of infringement, or through a proceeding to cancel the registration of a “confusingly similar” mark blocking a new applicant’s registration. However, four years ago this month, the United States Patent and Trademark Office (USPTO) implemented a post-registration audit program intended to pro-actively rid the USPTO register of marks that were not being used as required by law.
Trademark registrations are issued for use of a mark in connection with specific goods and services grouped in different classifications. Where an application is filed for a mark covering multiple goods within a class, a specimen showing the use is required for one item within each class. To maintain the registration, similar proof must be filed between the fifth and sixth year after registration, and for each renewal. Although these submissions include a declaration of the applicant/registrant that the mark is in use on all listed goods and services, the fact that specimens are not required for all goods within a class make it relatively easy to inadvertently or intentionally submit an inaccurate declaration for goods or services that were never used under the mark or discontinued without any intention of reviving.
For years, unsupported claims of use in registrations have gone mostly unnoticed, discovered only if a subsequent applicant, upon being refused registration because of likely confusion, discovered the nonuse and could prove it to the USPTO examiner, or undertook a cancellation proceeding against the prior registration. Under the new audit program, the USPTO randomly selects registrations with required maintenance filings to prove use of goods and services covered by the registration that are chosen by the USPTO. A registrant unable to prove use of the audited goods or services will be required to delete them from the registration and may receive a second demand for proof of all of the remaining goods or services in each class for which the owner has been required to delete goods or services initially identified by the USPTO. A per-class fee is charged each time goods or services are deleted, so it is advisable to remove all goods or services for which proof of use cannot be provided - not just those chosen for audit – in the first response. Failure to respond to an audit will result in cancelation of the registration.
Since commencing the program, the USPTO claims to have canceled or removed goods or services from registrations in more than 50% of audited registrations.
Prior to the adoption of the audit program, even responsible registrants would typically remove goods and services from their registrations only at the time of making a maintenance filing. However, to avoid incurring fees, registrants are now advised to delete goods and services prior to the opening of a maintenance filing window.
Because continuous use is basic for maintaining rights in a trademark and corresponding registration, owners should regularly conduct a self-audit to verify not only that it is used on the goods and services covered by any registration, but also that the mark is being used consistently and appropriately. For example, always use the mark as an adjective and not a noun (not “keep KLEENEX in every room” but “keep a box of KLEENEX brand facial tissues in every room”) or a verb (not “XEROX your document but “make a XEROX copy of your documents”; avoid using it in possessive or plural form; where practical, the mark should be accompanied by ® (federally registered marks only), TM or SM (for registered or unregistered trademarks or service marks, respectively); and use the mark in a consistent format and as shown in any registration, without alteration or variation (this can be any style of a word mark registration, but without variation in any design registration).
