Trademarks, Service marks, Specimens, and Establishing Commercial Use!

Registering a trademark or service mark is the easiest method of establishing nationwide trademark rights.  You can register a mark under section 1(a) based on use in commerce or register it under section 1 (b) an intent to use, as long as, you have a good faith intent to use it in commerce.  However, even if your intent to use application is allowed, you still will not obtain a certificate of registration without demonstrating commercial use of the mark.  Typically, this requires the trademark owner to file an Affidavit of Use.  Although you may be able to claim priority based on the date of filing for the intent to use application; you will not be afforded any registered trademark or service mark rights, until you have demonstrated a commercial use.

Consequently, the key for any trademark or service mark holder is the need to demonstrate and establish a commercial use of the mark.  However, sporadic and token uses of a mark are not sufficient to establish or demonstrate commercial use.  Moreover, you have to demonstrate commercial use of the mark in connection with the goods or services that you are looking to register them in. It is true that trademark law allows for expansion of the geographic zone and into related products or services.  However, unless you have a specimen demonstrating commercial use of the trademark or service mark in connection with the goods or services that you are attempting to register the mark in; the trademark examiner is unlikely to allow you to register the mark.

Therefore, having a good understanding of what is required to demonstrate commercial use and the specimen requirement are crucial to establishing federal and nationwide trademark or service mark rights.  Otherwise, the goodwill and value of your brand is likely to be ripped off or usurped by copy cats or individuals that are second comers to a market you have developed.

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