While prosecuting a U.S. application to register a mark, a primary concern is to avoid obtaining a registration that can be easily cancelled, especially based on an allegation that your company defrauded the USPTO by falsely asserting proper use of your mark in interstate commerce.
How might that happen?
Assume a competitor wants to use the mark (or wants to harm your business) but can’t because your company already registered that mark. The competitor might try to have your company’s registration cancelled if they think they can present evidence that your company wasn’t properly using the mark in interstate commerce when, to obtain registration, you falsely asserted that it was. They also can seek cancellation if your company is no longer properly using the mark.
From a registration perspective, proper use is a “bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark”. Moreover, proper use requires that the use is not “de minimus” (too trivial or minor to merit consideration).
Regrettably, there is no bright line test for determining whether use of a mark crosses the threshold from minimal to sufficient. But here are some warning signs that use of a mark might be inadequate:
- Specific product for which the mark would be used is unknown or vague;
- No promotional activities for the associated products;
- Products are simply relabeled with the mark to create a specimen;
- Labels are handmade and/or not of a normal commercial character;
- Long delay between first use of mark and subsequent uses;
- Sporadic, casual, or transitory sales of products that are normally sold in greater frequency in the particular industry; and/or
- “Sales” are not arms-length transactions, e.g., a sale to a family member is not considered sufficient to support registration.
Generally, it’s a good idea to document proper use of your company’s mark, including keeping records of first and continued use of that mark with sales in interstate commerce, as such records can be used to fight off an accusation of fraud or abandonment of the mark. Such records can include photos of goods bearing the mark, screenshots of web pages using the mark with offered services, and paid invoices for each.