Using Your Trademark in Commerce

Once you have created your mark, you should prominently and continually use it in commerce once you have begun conducting business. Remember, ultimate priority of protection is given to whoever establishes the same or confusingly similar mark first in commerce. Only Federal registration permits your intent to use a mark as the basis for registration. In most states, your mark is not eligible for protection without actual use in commerce. There are a variety of ways you can properly establish use of your mark in commerce so that it is eligible for registration. Examples include display of the mark on the product label or packaging, on business cards, letterhead or advertisements, your website, even on the good itself. For service marks, examples may include use on business cards, letterhead, brochures, flyers or advertisements. The bottom line is you should display any protected mark prominently on all forms of advertising and on your goods (or product packaging or labeling) in order to establish use and promote branding.

In addition, you will have to renew your registration at both the Federal and State levels. Most State’s require renewal every 5 years after the registration date. Federal law requires that you renew your trademark between the first 5 and 6 years of initial trademark registration (this is done by filing a Section 8 form, which costs $100). Upon year 10, and every 10 years afterward, you are required to file a combined Section 8 & 9 form. You can always contact the USPTO directly at (it takes them about a week to get back to you via e-mail).


Abandonment, Licensing and Generic Marks

The rights to a trademark can be lost through abandonment, improper licensing or assignment, or by becoming generic. A trademark is abandoned when its use is discontinued with the apparent intent not to resume use. Intent can be inferred from the circumstances. Non-use for three consecutive years generally establishes a presumption of abandonment by the owner of the mark. Trademark law only protects marks that are being used continuously in commerce and parties are not entitled to hoard potentially valuable marks without using them at some point. Thus, avoid any gaps in use and otherwise use your trademark continuously in commerce in the manner detailed above.

Trademark rights can also be lost through improper licensing or assignment. Where the use of a trademark is licensed (for example, to a franchisee) without adequate quality control or supervision by the trademark owner of how the mark is being used, that trademark will be canceled. Similarly, where the rights to a trademark are assigned to another party without the corresponding sale of any assets (i.e. purchasing a business), the trademark will be canceled. Under these situations, the trademark no longer serves its purpose of identifying the goods of a particular provider.

Simply stated, you need to take affirmative measures to protect and control the use of your mark at all times.

Trademark rights can also be lost by becoming generic. Sometimes, trademarks that are originally distinctive can become generic over time since the public comes to associate the trade name as the actual product itself. Of course, these marks are extremely famous and well established, such as “xerox,” “thermos,” “aspirin” and “cellophane.” A word will be considered generic when, in the minds of a substantial majority of the public, the word describes a broad type of product and not a specific source or manufacturer. The term “generic” has been established by the Courts through the use of dictionary definitions, the use of the term in newspapers and magazines and through the internet, along with any evidence by the trademark owner in protecting its mark.


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