It’s time to prove that you are using your trademark. Maybe you’re filing a statement of use after an intent-to-use application. Maybe the mark has already been in use when you file the initial application. No matter the situation, the U.S. Patent & Trademark Office will not allow the mark to register without proof that the mark is actually being used in commerce. So, what, precisely, are they looking for? The rules are different for goods than for services, so today we’ll focus on goods – i.e. tangible products. We’re also restricting discussion to the federal trademark system.
When it comes to proving use, the gist of it is this – a proper specimen of use shows the mark being used in connection with the applicable goods. And, those goods must be available to the consumer in the present moment. This means, for example, that registering a domain name does not, by itself, constitute proper trademark use. Merely owning a URL does not indicate what goods will be offered at the site, nor does it prove that those goods are available for sale right now. Similarly, taking pre-orders of an upcoming product is not trademark use. “Pre-order” indicates that the product does not exist yet, and so no actual use has been made. For this reason, Kickstarter or other crowdfunding campaigns are not good for trademark registration (at least, not in and of themselves).
Although just having a domain name doesn’t qualify, building an actual website may. However, not just any website usage will do. A web page must constitute a “display associated with the goods” that describes the goods (whether in text or in photos), associates the mark with the goods, and provides a clear method for ordering the goods. Typically, placing the mark large and in the upper-left-hand corner suffices when there is an obvious “Buy Now” or “Add To Cart” button near the goods in question. Other placement schemes might also qualify, but, as is often the case, It Depends.
The same is essentially true of all advertising. Flyers, catalogs, commercials, or whatever else. Just announcing that a product exists isn’t enough. It doesn’t matter how much money was spent on the ad. It doesn’t matter where the ad ran or for how long. It doesn’t matter how many flyers were handed out or what font they used. What matters is clearly identifying the product and providing a way to order it.
So, what will suffice? Placing the mark directly onto the items is a good way to do it, if it’s feasible. Labels are also common places to include a trademark. The shirt that you’re wearing right now almost certainly has a tag with a brand name on it. Commercial packaging like shipping boxes or bags can be good specimens of use. And for audiovisual media, like video games or movies, a splash screen at the beginning will usually work just fine.
Showing proper use of a trademark is not always a straightforward process, and special rules exist for different kinds of goods.