Use it or lose it: maintaining your trade marks

Once your trade mark is registered, you cannot become complacent and assume that it will remain in force for the full list of goods and services for as long as you continue to renew it. In some countries, it is necessary to file evidence and information confirming the commercial use of a trade mark in order for the mark to be maintained.

Countries which have additional use requirements include: USA, Puerto Rico, Mexico, Philippines, Argentina, and Mozambique.

Some of these countries only require confirmation that the mark is in use but other countries, such as the USA, require actual evidence of use to be filed at various points post-registration in order for the trade mark to remain validly registered.

Since the US is particularly stringent, this article is going to concentrate on US criteria, illustrating the requirements which must be met in order to maintain trade mark rights.

To simplify the legalities we’ve set up three different scenarios where we’ll explain the application of the law to give readers an indication of use.

The clothing label

A business has a US trade mark registration for the mark ‘ABC’. The registration covers ‘clothing’ and the business uses the trade mark ABC on the product labels sewn into the product and the swing tags affixed to the product.

Can the business maintain this trade mark?

The answer is ‘yes’; providing it files a photograph of the product showing the labels and swing tags affixed to the product.

Jewellery range

A company has a US trade mark registration for the mark ‘XYZ’. The registration covers the goods ‘jewellery’ and the services ‘retail of jewellery’ and ‘design of jewellery’. The trade mark XYZ is used on the company’s website which promotes the jewellery range and its bespoke jewellery design services, but the jewellery cannot be purchased directly from the website.

Can the company maintain this trade mark?

Here the answer is also ‘yes’; it is being used in relation to the services ‘retail of jewellery’ and ‘design of jewellery’. Website prints showing the trade mark in close proximity to the services is sufficient evidence of use for services.

However, the answer would most likely be ‘no’ in relation to the jewellery products themselves. Website prints are not usually sufficient evidence of use for products if the product cannot be purchased directly through the website.

Stationery merchandise

An enterprise has a US trade mark registration for the mark ‘123’. The registration covers the goods ‘fountain pens, pencils, crayons, notebooks, journals, newsletters, leaflets and diaries’ in class 16. The company only provides evidence of use of the trade mark 123 on product labels affixed to notebooks and journals but it confirms that it does use the mark in relation to the other products.

Can the enterprise maintain this trade mark?

In theory, we would say ‘yes’, as the company only needs to provide evidence of use for one product in each class of good or service covered by the trade mark.

Auditing programme

Since November 2017, the United States Patent and Trademark Office (USPTO) has been operating an auditing programme to help ensure that the US trade mark register is reliable and that trade marks on the register only cover the goods or services in relation to which the mark is used in market.

Since the start of the programme, almost 25,000 registrations have been audited by the USPTO. Of these marks, almost 50% have had goods, services and classes deleted from the registration and over 3,250 registrations have been cancelled in their entirety.

In this situation, if the registration is audited, the Examiner will request additional evidence of use for some of the unevidenced goods covered by that trade mark. If the business is unable to provide the required evidence for the identified goods, then it will be asked to provide evidence of use for all of the goods covered by the registration. Any goods which it is unable to provide sufficient evidence of use for, will be deleted from the registration.

If in doubt, get advice

Given the high number of registrations which have been affected by the auditing programme, it is important for owners of US trade mark registrations to ensure they are using their trade marks in a way that complies with this strict use criteria.

There is no fixed rule as to what evidence should be filed to demonstrate use of a trade mark as this will depend on the circumstances of each case. By instructing a trade mark attorney, advice specific to your situation can be provided.

If you would like advice on maintaining your overseas trade marks, please contact the authors, Rosanne Farmer and Parminder Dyal, or your usual Barker Brettell trade mark attorney.