On My Mind Blog

This means that your trademark must have been used on or in connection with goods actually transported in commerce, or your service mark must have been displayed in the sale or advertising of services actually rendered in commerce.  Use of your mark only to promote or advertise your goods or services is insufficient.

The registered service mark DISCUSS.IO was ordered cancelled in such a proceeding.

Background

We previously reported that a third party (or even the Director of the U.S. Patent and Trademark Office) may initiate an Expungement Proceeding or a Reexamination Proceeding under the Trademark Modernization Act of 2020.  A petitioner in these one-sided proceedings without input from the registrant could challenge the validity of the use-based registration of your mark claiming that it (a) never was used in commerce, (b) was not in use as of the filing date for a use-based application, or (c) was not in use as of the the filing date of the amendment alleging use, for an intent-to-use application.  We explained these procedures in Trademark Law Alert—Regulations Implement the Trademark Modernization Act of 2020.

We also explained trademark and service mark use requirements in U.S. Requirements for Establishing Use of a Trademark in Commerce.

The Case

A third party sought reexamination of the registration for DISCUSS.IO for streaming services in Class 38, and for providing temporary use of web-based software for conducting and analyzing market research in Class 42.  Petitioner alleged that this mark had not actually been used in commerce at the time the application was filed.  Among other things, Petitioner pointed out that Registrant had not filed an acceptable specimen of use to support Class 38 services.  The Examining Attorney found that Petitioner had made an apparent case for nonuse and decided in favor of Petitioner.

On appeal, the Trademark Trial and Appeal Board (TTAB) affirmed that decision. As a result, the TTAB ordered cancellation of the use-based registration due to lack of proof that the mark had been in actual use for services rendered in commerce at the time the application was filed.

In the appeal, Registrant defended by attaching invoices to its appeal brief.  However, this evidence was submitted after the appeal had been filed. The record is required to be completed before an appeal has been filed.  The TTAB deemed these invoices untimely and therefore it did not consider them. 

The evidence Registrant timely introduced consisted of:

1.   Promotional and advertising materials, and

2.   Consumer reference guides.

Registrant and the TTAB agreed that the first two items did not prove that the services were rendered.

 3.   Articles about the services.

The articles, even if their contents were treated as true, were at best indirect evidence. The TTAB found them insufficient in part because they showed what appeared to be a stock promotional image repeatedly used in Registrant’s marketing materials. 

4.   Wayback Machine archived internet screenshots from 2016.

The Wayback Machine printout, even if accurate, was more than five years old and was not reasonably contemporaneous with the filing date of the application.

The TTAB found it notable that Registrant failed to introduce any direct evidence from a declarant with firsthand knowledge to demonstrate that Registrant had made “bona fide” use of the mark in commerce not made merely to reserve a right in the mark.

The TTAB concluded that Registrant’s evidence failed to demonstrate that its services under the mark actually had been rendered in commerce as of the application filing date.  Accordingly, the TTAB affirmed the cancellation of the registration for each class.

In re Discuss.io Inc., Reexamination No. 2023-100526R for Reg. No. 6729238 (T.T.A.B. July 17, 2026).

Author’s Note:

As in the foregoing case, an application to register a mark in the U.S. may be based on a claim of use in commerce accompanied by a specimen of use. In the alternative, an application may be based on an intent to use the mark in commerce (which must be followed by a claim of use with a specimen before the registration is issued) or on a home country registration (which does not require a claim of use or a specimen before the registration is issued). 

However, for all registrations regardless of the basis, a declaration showing that the mark is currently in use in commerce for the listed goods or services, accompanied by an acceptable specimen of use, is required during the sixth year of the registration (plus a six-month grace period), if not before.

You should take seriously any challenge to the required use of your mark for goods transported or services rendered in commerce.  You also should complete the evidentiary record before you appeal an adverse decision. 

The best evidence is:

• A specimen of use, or other documentary evidence, showing that the goods actually were transported, or the services actually were rendered, in commerce under the mark at the time you filed a claim of use, or

• Testimony by an employee or customer with personal knowledge of the use of your mark in commerce.

If you fail to produce such evidence when required, even though you may have been granted a use-based registration, your U.S. registration may be cancelled.

For further information, please contact William M. Borchard or your CLL attorney.