Proof of Use and USPTO Federal Trademark Registration

Proof of Use

Individuals and business are constantly attempting to register their brands with the United States Patent and Trademark Office (USPTO). The trademarking process is often a lengthy and frustrating process.  One of the main reasons why a trademark application is rejected is because the applicant fails to properly prove they are using the trademark as applied-for. This post will explore the mistakes federal trademark applicants make when submitting their proof of use to the USPTO make and highlight ways to avoid such pitfalls.

Trademark Mismatch

One of the most common mistakes trademark applicants make is that they apply for a particular mark and end up using their mark differently in real life.  This is true of both word and logo trademarks. It is absolutely crucial you apply for the mark as it is used in real life or how you intend to use the mark. Simple mistakes like improper spacing and including/not including grammatical characters can doom an application.

For example let’s say I was going to apply for the trademark “TONY’S BEER” as two words, but in reality I used the mark on my beer bottles as “TONYSBeeRZ”. Capitalization does not matter in a standard word mark. However, in my example, the USPTO would reject my specimen because the mark is: (1) shown as one word; (2) does not include the apostrophe between the Y and the S; and (3) includes a Z after “BeeR”.

The same principle applies to logos.  If you submit a particular logo, you need to make sure you use that exact logo.  If you need to alter your logo, then you will need to file the new logo as new application.

Many people apply for trademarks that include “.COM” at the end of the mark. This is perfectly fine. However, you need to make sure that your website includes the “.COM” after the brand.  Amending my previous example, let’s say I applied for “TONYSBEER.COM”. Merely having the “.com” appear on the address bar will not suffice.  The banner at the top right or middle of my website would need to read “TONYSBEER.COM”. Additionally, if the banner on my site said “TONYSBEER” and “.COM” was underneath “TONYSBEER” I would need to apply for the trademark as “TONYSBEER .COM” including the a space between “TONYSBEER” and “.COM”.

Logo Color Mismatch

I often recommend my clients do not claim color as a feature of their logo marks.  I do this because many business want the ability to change their color scheme in the future while still keeping the same logo. If you apply for a logo trademark and claim a particular color scheme you will be stuck with that color scheme unless you refile the trademark with your new colors. Not claiming color gives you greater flexibility in your business and helps you avoid unnecessary legal and government fees to refile the new color layout.

Tangible Goods

The USPTO has been cracking down on photoshopped and mock-up images to serve as proof of use. If you are selling a tangible good (things like screwdrivers, remote control helicopters,  laptops, vapes, or fidget spinners) it is best to submit natural photos of the product to the USPTO showing the trademark on the product itself and/or the product packaging. Natural photos mean unaltered pictures that are not digitally enhanced or created. The simpler the photo the better. I often ask my clients to place their product on a table or counter and take a photo with their cell phone camera.

Services

Services can sometimes be tricky to prove use because you are not necessarily selling a product per se (things like plumbing services, restaurants, roofing, dental offices). The best proof of use for a service is often a screenshot from the company’s website that displays the trademark at the top of the page and details the services offered under the mark. Alternatively, pdf advertisements that show the trademark and detail the services work well. For services like a restaurant or a bar, including a pdf of your menu that displays the trademark at the top of the menu should also be included in your application.

Clothing Brands

Countless clothing brands apply for federal trademark protection everyday.  One of most striking realities my clients face on a daily basis is that their use of the trademark is insufficient for registration on the Principal Register. People think that simply because they have their trademark on the front of a t-shirt or hat that they are using the mark in a trademarkable fashion. This is far from the truth.

The primary purpose of a trademark is to be an identifier of the source of the goods. While having your brand name or logo on the front of a hat signifies to the ordinary person that the hat came from that source – it is not so in the eyes of the USPTO. The USPTO prefers to see the trademark on the clothing tags. This can either be the imprinted label common on modern clothing, the traditional sewed on tag, or even a removable hang tag. Not only does proper labeling increase your business’ reputation, it also signifies to your customers that you are selling a quality product.

For example, let’s say you went to your local outlet mall and purchased a $50 Nike shirt from the Nike store. As spending $50 on a t-shirt is often a fairly large purchase for the ordinary consumer, you would expect that t-shirt to be a high quality branded product. However, when you get home and want to show off your new t-shirt for the first time you glance at back tag and notice it reads “GILDAN” rather than showing “NIKE” or the famous Nike Swoosh. You would naturally assume you had paid way too much for the shirt.

By incorporating proper labeling you greatly increase the chances your mark can be registered on the Principal register. However, incorporating labeling can be expensive and unrealistic for many clothing sellers. Not to worry! If you only screen print your trademark on the front of your clothing you can still apply for the Supplemental Register. The Supplemental Register does not offer you the same procedural legal benefits the Principal Register offers. But registration on the Supplemental Register does afford you the right to place the ® symbol next to your mark. Overtime, your mark may gain sufficient distinction that will allow the mark to move from the Supplemental Register to the Principal Register.

Software

Proving use for software can be difficult as many software platforms do not include the trademark itself on all parts of the program. A great way to prove use for downloadable software is a screenshot of the “download” button on either the business’ website or on a mobile application store such as the App Store or Play Store.

It is always best to include actual screenshots that demonstrate the functionality of the program that also display the trademark. Also, you should include a pdf advertisement or other material that displays the trademark and explains what the software does and how it works.

If you merely take screenshots from within the software that do not actually show the trademark, the USPTO will likely reject the specimens. Therefore, if you are developing a software it is best to have the trademark shown throughout the software – perhaps at the top or side of the application.

You should be vigilant to ensure you apply for your trademark in the exact way you use the mark in real life. Even a simple mistake can cost you or your business thousands of dollars in legal fees and government fees that could have been avoided with a little more attention to detail in the initial filing process.


ANTHONY BUCHTA JR. is an Associate Trademark Attorney at LegalForce RAPC Worldwide. He holds a Juris Doctorate degree with a Certificate in Law, Science and Technology from the Sandra Day O’Connor College of Law at Arizona State University. He attended Northern Arizona University for his undergraduate studies, earning a B.S. in History with minors in Political Science and Criminal Justice & Criminology. Anthony is an avid Sun Devil Football fan who enjoys playing the guitar and saxophone. He is admitted to practice law in Minnesota.

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ANTHONY BUCHTA JR. is an Associate Trademark Attorney at LegalForce RAPC Worldwide. He holds a Juris Doctor degree with a Certificate in Law, Science and Technology from the Sandra Day O’Connor College of Law at Arizona State University. He attended Northern Arizona University for his undergraduate studies, earning a B.S. in History with minors in Political Science and Criminal Justice & Criminology. Anthony is an avid Sun Devil Football fan who enjoys playing the guitar and saxophone. He is admitted to practice law in Minnesota.