Do-It-Yourself Trademark Filings
There are several DIY and semi-DIY trademark services offering to help applicants file their trademark applications with the USPTO. In many cases, we see errors jeopardizing the validity of the registration. These mistakes become fatal if not timely corrected. The result is the sacrifice of the validity of the registration in exchange for cost savings. While re-filing a new trademark application is an option, it would forfeit the earlier filing date of the original filing, incur greater costs and prolong the entire application process.
One of the most common mistakes we encounter relates to the alleged use of the mark prior to filing a use-based application. We see similar mistakes made in prematurely filing a Statement of Use in an Intent-To-Use application.
Nonuse prior to filing use-based application
A trademark application claiming actual use of the mark in commerce is based on Section 1(a) of the Trademark Act, and is often called a Section 1(a) application. In a use-based application, the applicant is declaring that they have made use of the mark on all the goods and services identified under their Section 1(a) filing basis. What would be the consequence if the applicant, in fact, did not use the mark on certain goods or services prior to filing the use-based application? The result is that the mark would be considered void ab initio mark, or void from the beginning.
Nonuse prior to submitting Statement of Use in ITU application
The same result would occur in the case of prematurely filing a Statement of Use in an ITU application. If the applicant had not used the mark as of the filing date of the Statement of Use, then the mark would be void ab initio. Note that a Statement of Use cannot be withdrawn [TMEP 1109.17], but an Amendment to Allege Use can be withdrawn before approval of the mark for publication [TMEP 1104.11].
What is a void ab initio mark?
Void ab initio is a fancy term to describe a trademark that is void from the beginning. A trademark can be void from the get-go due to failure to use the mark prior to filing a declaration of use in the following two scenarios:
a) filing a use-based application; or
b) filing a Statement of Use in an Intent-To-Use application.
A mark is not void simply because the applicant identifies too early of a date of first use (e.g., applicant claims first use date of January 2017 when in fact the first use date was March 2017). Instead, void ab initio refers to the specific situation where the applicant failed to use the mark as of filing date of a use-based application or the filing date of a Statement of Use.
What if the applicant identifies a date of first use earlier than the actual first use date?
Identifying a much earlier date than the actual first use date is not necessarily fatal as long as the applicant had sufficient use in commerce as of the filing date of the trademark application or Statement of Use.
Is void ab initio the same as fraud?
No, fraud is an incredibly difficult claim to prove at the TTAB. Proving a void mark is much more feasible since the intent of the applicant is irrelevant. Proving a void mark will not necessarily be easy since it can be quite challenging to prove a negative.
Furthermore, a claim of void ab initio may apply against an applicant who was mistaken as to the correct filing basis for their trademark application. In other words, ignorance of the law is not an excuse to defend against a void ab initio claim
How to prove nonuse of mark
Trademark filings can be challenged by filing an opposition for a pending application or a cancellation for a registration. In either case, the plaintiff may seek information on the trademark owner’s alleged use by propounding discovery requests. The lack of meaningful responses to those discovery requests can become a key piece of evidence in proving lack of use as of a certain date.