Technical use requirements differ for trademarks and service marks.
A trademark identifies a particular product or service, enabling us to buy it again or to avoid it. It usually is a distinctive word or logo, but it can even be the graphics on, or the configuration of, a container or possibly even the product itself.
When you apply to register a mark and the time comes to prove to the U.S. Patent and Trademark Office that the mark has been put into use as a trademark for goods, or as a service mark for services, your lawyer may tell you that you have not met the technical requirements to assert a first use date.
To qualify a mark for a date of first use on a product, you must use the mark as follows:
(1) Affix the mark to the product or to its label, hangtag or packaging;
Display the mark on a point-of-sale sign. (This includes use on a website where the mark is shown in proximity to the product—especially when several marks are shown on the web page—but only if a consumer may order the product online, You can see examples showing what is and is not acceptable in the Trademark Manual of Examining Procedure).
(2) Transport the product in commerce in the ordinary course of trade and not merely to reserve a right in the mark. A sale is not required.
If you merely display the mark in an advertisement, promotional material, shipping document, invoice or social media announcement about the product, your lawyer will reject this as being inadequate for this purpose.
The technical requirements for a date of first use of a service mark are more lenient:
(1) Display the mark in rendering the service;
Display the mark in advertising or promotional material that also describes the service and establishes an association between the mark and the service. (This includes such use on a social media website, blog, letter, email or press release).
(2) Actually render the service in commerce in the ordinary course of trade and not merely to reserve a right in the mark.
Your evidence of advertising use must be an actual advertisement; If you provide artwork, your lawyer will reject this as being unacceptable for this purpose.
In short, you cannot establish trademark use merely by advertising the product (even though this may work for a service) or by taking an order before shipping the product; and you cannot establish service mark use merely by announcing that the service will be rendered in the future.
Further, you cannot establish use of a mark by making token use merely for trademark purposes. The use must be bona fide use in the ordinary course of trade, although this can differ by industry—infrequent sales of an expensive or seasonal product would qualify, as would clinical testing of a pharmaceutical product.
Use Analogous to Trademark Use
Even if you do not meet the technical requirements for claiming your own date of first use of a mark for application purposes, you may still have enforceable rights if you have caused the public to associate your mark with a product or service. For example, if you do not affix a mark to a product but have used it only in advertising the product, or if you have advertised a future service under a mark, that may qualify as “use analogous to trademark use.”
Although this non-technical use would not establish a first use date for trademark application purposes, it might enable you to assert priority rights over a later technical user of a conflicting mark in an opposition to prevent registration of the conflicting mark or in an infringement proceeding to prevent its use.
For further information contact your CLL attorney or William M. Borchard.
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