How to Prove The Use of a Trademark?

“To become the king of your business, you must register your trademark.”

Well, nothing else can answer the questions like “why should I register a trademark?” or “Are trademarks really that important for my brand?” YES, trademarks are the game-changer for your business, whether it is a product-oriented or service-oriented business, local, national, or international. And if you have a proof of use, trademark registration gets very easy.

To register your trademark in any country, you need to prove that you are using the trademark. Proof of use can be the deciding factor whether the trademark office grants you the trademark or not.

What is Proof of Trademark Use?

It is evidence that proves that the applicant is using the proposed trademark for selling the products or services. Different elements such as advertising expenditure, screenshots of websites using the URLs, invoices, flyers, etc. qualify as proof of use.

Read why in the first place your business or company needs a trademark?

How do You Prove a Trademark is used?

Following are the requirements for proof of use of a trademark:

  1. Photographs of the mark attached to the items on a tag or label.
  2. Images of the mark that are shown or marketed on automobiles (if any)
  3. Market share reports or data for the goods or services
  4. Storage boxes and packaging material exhibiting the trademark 
  5. Professional rental deals specifying the mark’s usage in connection with products and services
  6. Hang Tags or labels with the mark and generic name of the real items on the tag or label, as well as any other information that would normally be available on a tag or label used in commerce for these types of goods.
  7. Agreements for supplies and shipment paperwork
  8. Documents of tax payments
  9. The proprietor’s business cards with the logo
  10. Documents regarding the sale of trademarked products and services
  11. Product and service input from customers
  12. Screenshots of the brand’s websites that demonstrate the usage of the mark in connection with the goods at their point of sale, along with the URL and access or print date.
  13. The proprietor’s letters, letterheads, or goods that bear the logo
  14. Information collected from the official site and domain names
  15. Any manufacturing licensing agreements
  16. Brochures, commercials, demonstrating a link between the mark and the product
  17. Display boards or flashcards
  18. Any verifiable proof of the proprietor’s sponsorship of an event bearing the trademark.
  19. Commercial receipts, reimbursements, and invoices
  20. Screenshots of websites with the URL 
  21. Copies of pamphlets or posters that promote the services and include the mark
  22. Photographs of the mark on packaging where the items are also visible through it
  23. Photographs of the mark on packaging identifying the generic name of the items contained within the package
  24. Pictures of the mark on branding in a retail store or restaurant

This is just an idea of requirements for proof of use of a mark. You can use so many other elements as well, the list is endless.

5-Point Checklist to Consider Before You Submit Proof of Use of Trademark

  • The attached pieces of evidence should pertain to the applied mark only
  • The attached documents should be more than enough to prove to the registrar that the applicant is using the mark in the market
  • The proof of use should also state the geographical location in which the products or services are being offered.
  • The documents and other evidence should build a strong link between the mark and offerings under the mark.
  • All the documents should be original and authentic. There are high chances that the office will reject your application if you use fake or manipulated pieces of evidence.

The fabricated or fake document issue brings us to our next point, Sham Transaction.

What is Sham Transaction in Proof of Use of Trademark?

Suppose your trademark is not in use but you still want a registered stamp on it. In some cases, people tend to be so obsessed that they deliberately make just one manipulated sale or one shipment of the products. The aim is to provide an invoice or show a bill as proof of use that the trademark is in use.

You don’t need to have huge sales or revenues or import bills to prove that you are using the trademark. Just satisfying the need that the trademark is in use in the market is enough. If you fabricate the evidence to get the registered mark stamp, you may end up risking your company’s reputation.

In the case of trademark registration at EUIPO, the proof of use is quite significant. If the applicant or mark owner has not used the community trademark to genuine use within 5 years of registration, the EUIPO may impose sanctions.

What are Community Trademarks and Why Are They Beneficial?

What is a Trademark Audit?

A Trademark audit is when USPTO audits a trademark registration application to analyze the authenticity of the proof of use documents. The objective for auditing a trademark application is to reject those using fabricated evidence and ensure the authenticity of USPTO’s trademark registry.

What if the USPTO Audits Your Application?

Here is the further procedure

  1. USPTO will issue an office action aka notice that it is auditing your registration application. You will have a period of 6 months or until the statutory filing period ends, whichever one is later.
  2. Within 6 months, you need to respond with proof of use of the trademark by filing the “Respond to Office Action for Post-Registration Matters” form in the USPTO’s Trademark Electronic Application System (TEAS).
  3. In case of no response even after sending two office action notices, the USPTO will reject your application.

What is the Format for Office Action Response?

You can use this format for responding to office action by USPTO

During the relevant time period for submitting the affidavit of use, the proprietor was using the trademark in business or in conjunction with the products and/or services listed in the application for which use of the trademark in commerce is sought, as proved by the filed proof of use. The signatory, having been notified that intentionally false statements are subject to penalties by fine or imprisonment, or even both, under 18 U.S.C. 1001, and that such deliberate false statements may jeopardize the applicability of this application, affirms that the points made so far are correct; all assertions made from his/her own understanding are accurate, and all claims made on information and conviction are faithfully represented.  

Read Top 5 Reasons why USPTO May Reject Your Trademark Application

Should I Hire a Trademark Attorney for Proof of Use of Trademark?

Ideally, it is advisable to always hire a trademark attorney if you wish to register a trademark or renew it. A trademark attorney will help you through various stages from conducting a USPTO trademark search to office action response.

If you have not hired a trademark attorney but feel stuck to prove the use of a trademark, you must hire because the best trademark attorneys can help you submit just the right shreds of evidence. This is because, in the case of fair use of a trademark, USPTO stays very cautious and rejects the suspicious applications if they don’t contain sufficient proof of use of the mark.

Your evidence aka trademark proof of use specimen can shorten or lengthen the registration process. If the photos are blurry, files are corrupt, or just in general the specimen is insufficient, the delay or rejection is highly likely.

Apart from submitting adequate proofs, a trademark attorney will help you in:

1. Attorneys who specialize in intellectual property laws can assist you with legal matters.

A trademark lawyer can help you determine your legal rights and the foundation for filing your application. They may ensure that your application accurately specifies your goods and/or services, that you have picked appropriate evidence of usage, and much more during the application process.

2. IP attorneys can do trademark searches.

Before filing your trademark, get an intellectual property lawyer to conduct a thorough trademark availability search to see if it is eligible for registration.

A trademark can’t be too similar to another one that’s already been registered. USPTO will refuse registration of a mark if there’s a danger it’ll be mistaken with another mark, unlike a domain name, which you can own if the precise name isn’t already taken. Even if another mark isn’t registered, if it has common law usage rights, it could prevent your mark from being registered.

3. You can retain the services of an IP attorney to represent you before the TTAB.

Here are a few reasons for which you may need to appear before the Trademark Trial and Appeals Board (TTAB):

  • If you disagree with the examining attorney’s ruling, you can submit an appeal.
  • In case a third party complains about your trademark and seeks to have your application or mark canceled,
  • If you wish to file a trademark infringement lawsuit against someone else, follow these steps.

Appeals, Oppositions, and Cancellations are all time-consuming procedures with specific protocols.

When Do I Need Proof of Use?

To prove that the trademark you applied for using the trademark registration application is actually in use, you will need proof of use during the following stages:

1. While filing a Use Based Application

A use-based application means that the applicant is already using the mark in commerce. In such cases, you can use invoices, advertisement screenshots, display boards, brochures, tax records, etc.

2. While filing an Amendment to an Application to Allege Use

An allege to use application is filed after the intent to use the application. Moreover, one can only file an allege to use application before the completion of the review or approval of the application by the registrar of the trademark office.

3. While Filing a Proof of Use for a Statement of Use

In the case of intent to use applications, you need to submit a proof of use in less than 6 months of Notice of Allowance. USPTO and other trademark offices provide an option to apply for trademark proof of use extension upon following extension fees.

4. During Renewal of the Trademark after Expiry

Trademarks expire after 10 years of registration. To ensure the trademark’s continuous use, you need to submit a statement of continued use to prove the continuous usage of the mark. Also, the renewal of a mark needs renewal fees.

Is Allegation of Use the Same as a Statement of Use?

Yes, all three, allegation to use, statement to use, and an amendment to allege use are different terms with the same meaning. In simple terms, it means that the applicant who files an intent to use needs to actually demonstrate the using of the trademark before USPTO grants it the registered status.

When Must a Statement of Use be filed?

USPTO requires you to submit the statement of use within a period of 6 months of the issue of Notice of Allowance. After the timely filing of a statement of use and if it meets the requirements, the USPTO examiner undertakes the review of the statement of use to check whether or not it is in line with the requirements of the Trademarks Act.

Why Trust TMReady for Trademarks?

TMReady has become the synonym for trademark services today. Our years of experience, quality services, complete support, global availability, and affordable rates set us apart from other IP service providers. We provide A to Z of trademark services from the first stage (trademark search) to trademark registration and then finally trademark monitoring. Our trademark services are customized to suit your specific requirements. You can check our pricing and client testimonials for more information.

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