The United States, unlike many other countries, requires proof of use before a trademark registration will be granted. Applicants can still file an application before use commences, provided that the applicant has a bona fide intent to use a mark, but the trademark registration still will not issue until acceptable use evidence is submitted. This process can be very frustrating for non-U.S. applicants.
However, many non-U.S. applicants do not realize there are two exceptions to the use requirement in the United States, and they are only available to applicants who own a foreign application or registration.
- An applicant can file a national trademark application in the United States based on a foreign application or registration without submitting evidence of use. This application will register once a copy of the foreign registration is submitted.
- Extensions of protection of an international registration to the United States do not require evidence of use.
Both of these filing bases do require a statement of a bona fide intention to use the mark in the U.S.
Note that although a foreign entity can obtain a registration in these ways without proving use in U.S. commerce, it will need to submit use evidence between the fifth and sixth anniversary of the registration to maintain the registration. If proof of use in U.S. commerce cannot be submitted during that time, the registration will be cancelled. Registrants must provide proof of use in U.S. commerce for at least one good or service specified in each class of the registration. The U.S. Trademark Office ("USPTO") has strict rules for what does and does not constitute appropriate proof of use.
Moreover, actual use in commerce is still required to defend the trademark registration against a non-use attack. In the United States, three consecutive years of non-use "shall be prima facie evidence of abandonment." The takeaway for foreign applicants or registrants is it is possible to obtain a U.S. registration without the burden of proving use in the U.S. However, proof of use is required to maintain a trademark registration and to defend against a non-use attack.
Non-use cannot be cured through subsequent use in the United States for registration purposes (unless the period of non-use can be excused under exceptional circumstances). If a mark can be proven to have been abandoned through non-use at any time, then the registration will always be susceptible to a non-use attack.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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