Why You Must Use Your US Trade Mark
If you do business in the US, you are likely aware of the benefits of US trade mark registration. By registering a trade mark in the US, you can:
- become the presumed owner of the trade mark throughout the US; and
- obtain the exclusive right to use, license and sell the trade mark in connection with the goods and services listed in your registration.
Regardless of whether you register a trade mark directly through the US Trademark Office or under the Madrid Protocol, you must use your trade mark in commerce to maintain its registration. If you fail to use your US trade mark, the Trademark Office might cancel your registration. To avoid this from happening, this article explains how you can keep your trade mark registration valid in the US.
Nominating Use in Your Trade Mark Application
When you filed your US trade mark, unless your filing basis was a ‘foreign registration’, you may have noted that your application required you to nominate the use of your trade mark. You could nominate:
- ‘use in commerce’ if you had already used your trade mark in the US; or
- ‘intent to use’ if you have not used your trade mark in the US but intend to do so in the near future.
This is unlike an Australian trade mark application, which requires neither nomination.
Although, in some cases, you must nominate the use of a trade mark in your initial application and support this with evidence (also known as specimens), demonstrating use this one time is not enough. Rather, you must regularly demonstrate the use of your trade mark throughout its lifetime. This means that after you register your trade mark (regardless of the initial filing basis), you have to file maintenance documents:
- between the fifth and sixth year of registration;
- between the ninth and tenth year of registration if you choose to renew your application in this period; and
- every 10 years after this period.
Ultimately, using your US trade mark is necessary to maintain its registered status. If you do not use a trade mark for three consecutive years in the US, you are deemed to have abandoned your trade mark. Consequently, you can lose your rights to use, license and sell your mark.
‘Use in Commerce’
Trade marks will only remain registered in the US if you use them in commerce. ‘Use in commerce’ means that you use the trade mark in its original form to sell goods or services. When you file a required maintenance document following the dates mentioned above, you must submit a declaration stating that you have continued to use your trade mark concerning the goods and services listed in your registration. You should also accompany this signed declaration with a ‘specimen’ for each class of goods or services.
A specimen is evidence that you have used your US trade mark in the marketplace.
You can demonstrate the use of your trade mark by submitting evidence or specimens of:
- products that you sell which bear the trade mark;
- brochures and promotional material;
- business cards; and
- your business’ website.
Additionally, the Trademark Office often conducts audits of registered trade marks. In the instance where they audit your application, you may need to provide further proof of trade mark use for every good and service listed in your registration. If you fail to do so, you will likely have to delete any goods and services where you cannot prove trade mark use.
Licensing Your Trade Mark
The most obvious way to use your trade mark in commerce is when marketing and selling your goods and services. However, many trade mark owners fail to consider the option of licensing their trade mark.
Licensing is where you allow a third party (a licensee) to use your personal property; in this instance, a trade mark. Licensing can be an effective way to ‘use’ your trade mark in commerce if you want to maintain your trade mark’s registration. Under a licensing agreement, you can grant a licensee:
- an exclusive right to use your trade mark, meaning only they are allowed to use your trade mark for the duration of the licensing period;
- a non-exclusive right to use your trade mark, meaning multiple parties can use your trade mark for the duration of the licensing period; or
- sole rights, which include a combination of both exclusive and non-exclusive rights.
Whilst you may not be able to use your trade mark for the duration of the licensing period, you nevertheless remain the owner of your trade mark. However, you should note that you can lose a trade mark if your licensing agreement is ineffective. Additionally, if you license a trade mark without retaining some control of its use, you could also lose your trade mark for non-use. In any event, you should get in touch with an experienced trade mark attorney to ensure that you have licensed your trade mark correctly.
In order to maintain your trade mark’s registration status in the US, you must continually use your trade mark in trade and commerce. This means that you must use your trade mark in its original form to sell goods or services listed under your registration. If you need help regarding filing a trade mark in the US, our experienced trade mark lawyers can assist. Call us on 1300 657 423.
Frequently Asked Questions
No. In this instance, you can directly apply to the United States Patent and Trademark Office (USPTO) for trade mark registration.
You can either apply directly to the USPTO or use the Madrid System if you have a registered trade mark in Australia. If you would like to find out more about registering a trade mark in the US, get in touch with one of our lawyers.