Prove it or lose it! Tips on gathering evidence to support and maintain your trademark registration

Blog by: Attorney Elena Fewell Howard

So you have a product or service that you would like to associate with a certain mark - logo, name or slogan - that you would like to protect? You have decided to move forward with applying for your mark before the federal or state registry. You have done your due diligence or hired an attorney or other service to perform a search to determine whether the mark you would like infringes on an existing mark or is not merely descriptive.

Great! Now, amongst other information needed, you will also need to provide evidence that you are using your goods or service in commerce to submit to the appropriate government entity. 

Before we move forward, to learn more about differences between copyright and trademark please read here or information regarding when to apply for a trademark, please read here.

Evidence Submitted During the Application Process

Generally the following evidence will suffice for showing actual use in commerce. All specimens should show your mark fully displayed and exactly as depicted in your drawing attached to your application. The federal registry will not accept mockups or other digitally altered images or website drafts. The mark should be shown or used in a way that directly associates with your goods or services. If you do not adhere to these standards, your evidence may be refused. Some types of evidence may be:

✤ Website and/or Mobile App Screen Grabs
Ensure your screen grab shows both the website address and the date the site was accessed in the header or footer. You can use the print to pdf function on your device and there are also several plugins you can use, e.g. gofullpage if you use Google Chrome. 

If you are submitting that your site is for online retail or there are any online components with your service, include a printout of your shopping cart icon or evidence of what means is being used by the consumer for ordering the identified goods.

If a mobile app, an indicator should be shown in your printout that demonstrates how it is downloaded to the consumer's device. 

✤ Labels and Tags for Goods
A clear photograph with your goods labeled with your mark can be a good specimen. The mark must be physically attached to the product and show actual use in commerce, e.g. UPC code on tag, weight, volume, list of contents or ingredients or other similar information that gives the consumer information about your product. Appearance cannot suggest that the goods are not actually in commerce, e.g. tester samples or labels with the mark but no other sufficient information regarding the product.

✤ Displays
A clear photograph of a point of sale or sales counter with your product and mark in full display. 

✤ Advertising for Services
A newspaper or other advertisement including online advertisements or posts showing your mark in full display and related to your service.

✤ Invoices
Invoices showing the sale of your goods or services. You can redact private customer information or confidential or proprietary information when you are submitting your invoice.

Post registration record keeping/ maintenance

The USPTO may audit your registration or another party may attempt to cancel your registration. In order to not have to scurry last minute to gather evidence that the mark has been in use after registration, we advise keeping a file where you periodically save documentation evidencing use so that you or your attorney may properly defend your registration - not to mention it also will help when you need to renew your registration. 

Additionally, if you decide not to use a good or service that you were registered for and you do not plan on providing that service or good, it is advisable to delete the goods, services or classes from your registration to avoid incurring the deletion fee and deficiency surcharge that is assessed by the USPTO for federal registration when you are renewing the registration for your mark.

The USPTO is a valuable resource as well, they have this helpful post “Keeping your registration alive” here that also details maintenance of your registration.

At Rational Unicorn, we work with small businesses and proprietors to spot potential issues and propose ways for the business to protect itself presently or down the line. Get in touch to schedule a no-cost service consultation with our Rational Unicorn attorneys today.