How do you start using a trademark?
It’s not easy to come up with a new name or logo. It seems like more than half of the battle is creating a new trademark that hasn’t already been taken. How do you start using your new mark on your goods or services?
What counts as trademark use for goods?
The USPTO has specific requirements for trademark use on goods. Instead of throwing a bunch of rules at you, let’s keep things simple by remembering just two requirements:
- Make sure the goods have been sold and transported; and
- Make sure your mark is properly displayed.
First, the volume of your transactions must be sufficient. This requirement relates to the number of goods sold. There is no bright line test, but the point is that trivial sales would be insufficient to qualify as use of a mark.
So you need to start selling your goods. How much is enough? Think of the amount of sales that would occur in the ordinary course of business. What would be a normal sales range for an active business selling such goods? To be safe, make sure you have some sales to out-of-state customers.
Second, the mark must be properly displayed. When it comes to goods as opposed to services, the USPTO generally prefers to see pictures of the applied-for mark clearly displayed on the goods or packaging. What they do not want to see are advertising and marketing materials. Electronic point-of-sale displays, such as websites and online listings, may work if certain requirements are met.
What counts as trademark use for services?
Obviously, services differ from goods. While the same two general principles still apply, the second requirement is slightly different:
- Make sure you have rendered the services; and
- Make sure your mark is displayed in offering your services.
Regarding the first requirement, offering your services alone is not enough. You need to have performed those services for customers.
While examples of advertising and marketing would not work for goods, they actually work for services. So websites, flyers, brochures and all sorts of marketing materials would work as examples of use for services. Ideally, those marketing materials should contain some reference to the service you’re providing.
What if you cannot put your mark on your product?
It may be difficult to place the mark on certain goods. For example, how do you show a mark on a drink or food product? In some cases, it may be possible to show the mark on the packaging. But what if it’s hard to place the mark on the packaging as well?
In those tricky situations, a point-of-sale display, such as a website, might work if it fulfills the requirements. Make sure the point-of-sale display displays the price, the product and a way to order the item. Moreover, the trademark should be shown in close proximity to the product. If the mark is positioned too far away from the pertinent goods on your website, the USPTO might reject this type of usage.
Should you file an Intent-To-Use or Use-Based trademark application?
This is what many do-it-yourself trademark filers get wrong. Filing a trademark application based on use when the mark actually has not been used. Another mistake is including too many goods or services, and incorrectly categorizing all of them as based on use.
Many DIY trademark applicants do not realize their mistakes until 8-10 months later when the USPTO examining attorney finally reviews their application.
Want to get your trademark registered in less time and with less risk?
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