To be eligible for registration, a trademark must be used in commerce. At the federal level, trademarks are registered by the US Patent and Trademark Office (“USPTO”), and registration of trademarks by the USPTO requires use in interstate commerce. That is, the sales of goods and services that cross the borders of States.

Among other things, each applicant for a trademark must provide the USPTO with a Statement of Use and with specimens of use. The Statement of Use is a sworn form that must be completed providing information on when the trademark was first used and other details. As for the specimen of use, the USPTO has various rules about how to provide a proper and sufficient specimen. The rules vary a bit depending on whether the trademark is used with goods or with services.

Note that, generally speaking, the rules are the same whether you have filed a standard application or an intent-to-use application. Note further that specimens of use are required for each Class of goods/services with which the trademark is associated. Here is a quick rundown.

For tangible goods, the basic rule is that the trademark must be ON the goods themselves, on the packaging, or on the containers of the goods. Generally, photographs depicting the above are acceptable. In addition, for goods, the trademark can appear:

• On a tag for the good, such as a mattress or clothing tag
• On a label such as a can or bottle label, whether removable by the consumer or not
• On any sort of display where the goods are sold, such as a shelf display or something like the trademark used on a dispensing device (like a gas station pump or vending machine)

Since services are not tangible, it is not possible to show the use of the trademark on the product itself. Note also that what might be an acceptable specimen of use for services may not be sufficient or acceptable for goods/products. An example here is the use of the trademark in advertising. That is okay for a service trademark but not sufficient for a trademark used with goods/products. Here are some acceptable specimens of use for service trademarks:

• On advertising or printed marketing materials showing a link between trademark and service
• On packaging or transmittal packets where a physical thing results from the services, like an envelope for a prepared tax return
• Use in television, radio, and online commercials/ads for the services
• Signage where the services are rendered
• Use of the trademark on materials needed for providing/rendering of the services, such as a menu from a company providing catering service or a ticket for a music concert
• Use on invoices, business cards, letterhead, etc., where services are linked with the trademark

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.