Intent to use versus use in commerce (US)

The process of trademark registration in the US is a little bit different and potentially more difficult to navigate than it is in other countries. In particular, it is required that the use of the trademark is shown to the USPTO before the trademark can be fully registered. 

The trademark could be regarded as 'being used in commerce' as long as it is genuinely being used with particular goods and/or services defined on the trademark application.

A trademark is considered to be used in commerce with goods when:

Similarly, a mark is considered to be used in commerce for services when:

Both conditions have to be met simultaneously in either case. Furthermore, a suitable form of a specimen demonstrating the use in commerce needs to be supplied for all classes defined on the trademark application.

Alternatively, when the trademark is not yet being used with goods or services in commerce, the trademark application may be filed with an 'intent to use'. However, this does not mean that the trademark will be registered without the necessity of the use of the mark in commerce being established first. The applicant will be required by the USPTO to show that the mark is being used in commerce later on in the proceedings. The period for providing a suitable form of a specimen of use ends 6 months after the registration period but can also be prolonged. This course of action is subject to an additional fee, both the provision of a specimen of use and the prolongation of this period.

Use in commerce is demonstrated by means of a so-called specimen which is a real-world example of how a particular trademark is being used with goods or services. A wide range of these specimens is accepted by the USPTO, including product photos, screenshot of the website or a platform, marketing materials displaying the mark on the goods/in connection with the services.

It is important to note that the specimen should provide a proof of a genuine use of the trademark. It means that websites put together for the sole purpose of displaying the mark without any connection to the relevant goods and /or services are not admissible. Similarly, no artificial product photographs rendered digitally for the sole purpose of the trademark being displayed on the goods without at the same time having a genuine counterpart in the physical world.  

In the context of goods sold, a real photo of the product or its packaging clearly showing the trademark is sufficient. This form of a specimen is also applicable to a wide range of services tied to a physical location, such as a barber shop or a restaurant, where a photo of the store outlet is considered sufficient.

The screenshot of a website is also considered to represent an acceptable form of a specimen of use. Such screenshot should however display the products / services offered (as defined on the trademark application), the trademark itself and the URL of the website. It is also advisable to provide a screenshot that clearly shows the use of the trademark in the US which can be demonstrated by pricing in USD for example.

Our Specimen guide includes good and bad specimen examples categorized by classes and industries.