Trama logo

Trademark Academy

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. 

Use in commerce

The trademark could be regarded as

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

  • the trademark is placed on the goods, packaging for the goods, or displays associated with the goods (including web page displays), and 

  • the goods are actually being sold or transported in commerce in the US. 

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

  • it is used or displayed in the sale or advertising of services and the services are rendered in commerce, and 

  • the person rendering the services is engaged in commerce in connection with the services.

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.

Intent to use

Alternatively, when the trademark is not yet being used with goods or services in commerce, the trademark application may be filed with an ‘

Acceptable forms of a specimen of use

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.  

What is a suitable specimen of use?

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.

US-specimen-product

 

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.

US-specimen-website