When registering a trademark with the United States Patent and Trademark Office (USPTO), one of the key requirements is proving that you are using the trademark “in commerce.” This means your trademark is actively associated with the goods or services you sell and is used in a way that impacts interstate commerce.
Providing the right evidence to prove “use in commerce” is essential to complete your application. Here’s a guide to what the USPTO looks for and how to prepare the required evidence.
What Does “Use in Commerce” Mean?
Under U.S. trademark law, “use in commerce” refers to the bona fide use of a trademark in the ordinary course of trade. The USPTO recognizes two types of use:
1. Goods: The trademark must appear on the goods, their packaging, or labels and the goods must be sold or transported across state lines or internationally.
2. Services: The trademark must be used in connection with the advertising or sale of the services, and the services must be offered in commerce across state or international boundaries.
What Evidence Do You Need for Goods?
For goods, the USPTO requires proof that your trademark appears on the product, its packaging, or in online listings where customers can make purchases. Acceptable specimens include:
1. Labels or Tags
• Example: A clothing tag with your trademark affixed to the garment.
2. Packaging
• Example: A box, bottle, or wrapper featuring your trademark prominently displayed.
3. Product Displays
• Example: A point-of-sale display that features the trademark and the product it represents.
4. Online Listings
• Example: A webpage showing the trademark alongside the product for sale, with a clear purchase option (e.g., “Add to Cart” button).
What’s Not Acceptable:
• Mockups or digitally altered images that don’t reflect actual use in commerce.
• Advertising materials without proof of the product being available for purchase.
What Evidence Do You Need for Services?
For services, your trademark must appear in a way that shows it’s being used to promote or offer those services. Acceptable specimens include:
1. Website or App Screenshots
• Example: A webpage advertising your consulting services, with your trademark prominently displayed.
2. Marketing Materials
• Example: Flyers, brochures, or advertisements featuring your trademark and describing the services offered.
3. Signage
• Example: A sign at your place of business displaying the trademark and identifying the services you provide.
4. Invoices or Receipts
• Example: Business invoices or receipts showing the trademark and the services rendered.
What’s Not Acceptable:
• Business cards or letterheads unless they include evidence of offering the services.
• General promotional materials without a direct link to the services.
When Do You Need to Prove Use in Commerce?
1. For a “Use-Based” Application
If you file your application based on current use (Section 1(a)), you must submit proof of use with your initial application.
2. For an “Intent-to-Use” Application
If you file based on intent to use (Section 1(b)), you must submit a Statement of Use with evidence of use in commerce before the trademark is registered. You’ll typically file this after receiving a Notice of Allowance from the USPTO.
How Should You Submit Your Evidence?
1. Upload Specimens to the USPTO System
When filing your application or Statement of Use, upload clear, legible images or digital files of your specimens using the Trademark Electronic Application System (TEAS).
2. Ensure Accuracy
The trademark shown in your specimens must match the trademark in your application exactly. Any discrepancies can lead to rejection.
Common Mistakes to Avoid
• Submitting Incomplete Specimens: For example, showing a webpage without the purchase button or service description.
• Using Inappropriate Specimens: Like internal documents (e.g., memos) that aren’t consumer-facing.
• Failing to Show Use in Commerce: Specimens must demonstrate actual interstate commerce activity, not just preparatory steps.
• Submitting an edited photo: Specimens should not be edited or have the white background common in product listings. They should be natural photos (cellphone pictures are fine) that show the product and the mark clearly.
Tips for Strong Specimens
1. Be Consumer-Focused: Your specimen should clearly demonstrate how consumers encounter your trademark in the marketplace.
2. Keep it Relevant: Provide evidence that directly links your trademark to the goods or services in your application.
3. Ensure Clarity: Submit high-quality, well-labeled images or files that make it easy for the USPTO to verify your use.
4. Consult an Attorney: If you’re unsure whether your specimens meet the requirements, a trademark attorney can review them and guide you through the process.
Conclusion
Proving “use in commerce” is a critical part of registering a trademark. Whether you’re selling physical goods or providing services, the USPTO requires specific types of evidence to verify your claim. By submitting clear, accurate, and relevant specimens, you can ensure your application moves forward without unnecessary delays.
If you’re uncertain about your evidence or need help preparing your application, consulting with a trademark attorney can provide valuable guidance. They can help you navigate the process and avoid common pitfalls, giving your trademark the best chance of approval. Protecting your brand starts with strong proof—make sure your specimens meet the mark.