If you own a US trade mark registration, it is important to be aware that you’re required to periodically file proof that you’re still using the mark in the US. If you don’t, your registration will be cancelled. There is no such requirement in Australia. In Australia, you can renew your trade mark registration simply by paying the relevant renewal fees to the Australian Trade Marks Office.
How do you prove that you’re using the mark in the US?
By signing a declaration confirming that you’re still using the trade mark in commerce in the US, for the particular goods/services your registration covers, and filing a copy with the United States Patent and Trade Mark Office.
The declaration must include at least one example (called a “specimen”) showing how the mark is used in the US. The examples (specimens) you provide must show a clear connection between the registered trade mark and the particular goods/services your registration covers.
Some acceptable examples may be:
- for a registration that covers wine in class 33 – an actual photo of a wine bottle showing the trade mark on the label, or a photo of point-of-sale displays
- for a registration that covers perfumes in class 3 – a photo of the perfume packaging that includes the trade mark and clearly identifies the product inside
- for a registration that covers a range of software as a service (SaaS) services in class 42 – a screenshot of a webpage where the trade mark is displayed in connection with the software services, together with information about the services and how customers can access or purchase them.
One very important tip – carefully review your registered goods/services before preparing the declaration. If you’re no longer selling certain goods/services in the US, these goods/services should be deleted from your registration. If you claim use but can’t then provide acceptable proof, those goods/services may be removed from the registration, and there may also be other penalties.
When do you need to file evidence showing that you’re using the mark in the US?
For a national US registration, the obligation to prove use in the US first arises 5-6 years after registration. After that, you will need to file proof of use every time the mark is due for renewal, i.e. every 10 years. For a registration filed through the International “Madrid Protocol” system, proof of use first needs to be filed 5-6 years after registration in the US, and then again 9-10 years after registration, and then every 10 years after that.
The key takeaway
Unlike in Australia, maintaining a US trade mark registration requires ongoing proof that the trade mark is being used in the US.
Once your mark is registered, monitor future of proof of use deadlines carefully. If your plans for launching your product in the US market are delayed after registering your trade mark, consider whether you will be able to prove use when the first deadline arises. If you can’t, you may want to think about re-filing a new application for the same trade mark before your current registration lapses.
