Obtaining a certificate of Trademark Registration may seem like the final step in earning the rights to a Trademark, yet owners should be aware of potential assumptions that can be costly. The responsibilities of owning a trademark include:

  1. Showing that TM is being used in association with the sale of a good/service.
  2. Demonstrating that the goods/services are sold in the ordinary course of business.

The reasoning behind this rule is that Trademark law is primarily concerned with whether the Trademark identifies the source of the goods. If the mark is not used regularly in association with the goods or services, the Trademark fails to meet the Use test.  

So, what qualifies as “using” the mark? This may include intentionally making the mark visible on packaging, on hang tags, a website, and on signs advertising your brand. The key is to make the trademark name visible, and always do so in connection with the goods and services with which the trademark name is registered.

What Does Not Qualify as “Use”?

Unlawful use – The trademark must be used in association with a legal product/service.

Token Use” not enough – A token sale of one item, or a set of items at a very low cost does not qualify as “use in commerce”.  Although token use was previously accepted by Trademark regulation, updated regulations after 1989 no longer accept token use as a viable demonstration of use in commerce.  

The key is to make the trademark name visible, and always do so in connection with the goods and services with which the trademark name is registered.

Abandonment – Should a Trademark owner fail to use the Trademark in commerce, and fail to renew the trademark, the USPTO may label the mark as abandoned. An abandoned mark can then be claimed by a new owner.

Call Behrends Legal today to file your Trademark application, and to help you with your Trademark maintenance questions. info@behrendslegal.com .

*This article is not intended to be construed as legal advice, and does not constitute the creation of an attorney-client relationship. Prior to making any significant decisions related to its content, you should seek the counsel of a licensed lawyer for your state.