Trademark Application: Use or Not Used

Trademarks are used to identity your brand for the public. Trademark registration provides protection for your brand identity. A trademark application may be filed based upon ‘use’ or ‘proposed use’. To apply for a trademark registration on the basis of use, you must already be using the trademark in relation to goods and services. Proposed use applications are filed when you intend to use the trademark in future. It is also possible to file a trademark application that is based upon use and proposed use for different goods and services.

Use

When your trademark is already in use, you file for trademark registration on the basis of use. The use of a trademark differs depending on its association with goods or services.

• Generally use of a trademark in association of goods occurs when the good is sold in conjunction with the trademark. The trademark may be marked either on the goods itself or on the packaging.
• For services, if the trademark has been displayed in advertising or performing the service, then the trademark application can be filed on the basis of use. If the applicant has advertised or displayed the trademark in association with a service and is willing and able to provide that service then an application can be filed based on use even if the service has not yet been performed.

Importance of ‘use’

The notion of use requires adequate consideration, to determine the basis for filing. If the mark is already in use, the application must indicate such prior use. Filing on proposed use or on an incorrect basis can result in the validity of your registration being challenged and a loss of your trademark rights.

Date of Use

The applicant must correctly state the date of first use of the trademark in the application. The use of language ‘at least as early as’ is acceptable and considered in cases where the precise date of first use is not known. When the date of first use differs for some of the goods and services, the applicant can group them in general classes and provide the earliest date of first use for each class.

Proposed Use

Applications on the basis of proposed use can be filed when the applicant has not yet started using the trademark, but intends to use it. It is important to ensure that the trademark has not been used in relation to any goods and service when filing on basis of proposed use. If the information is found to be incorrect, your application or registration may be challenged.

When registering a trademark that has been filed based upon proposed use, a declaration of use must be filed. The declaration of use is a declaration that states that you have commenced the use of the trademark with all of the goods and services listed in the application. The declaration of use need not include the date of first use, but it must be executed only when use is commenced. Registration of the trademark will not occur until both the registration fee is paid and the declaration of use is filed.

A trademark application can be filed based upon both use and proposed use where the trademark has already been used for some goods and service, but not all of them. The applicant must provide the date of first use for any goods or services where use has already begun and indicate which goods or services are being filed based upon proposed use. You must keep in mind, that it is impossible to file an application on both bases in association with same good/service.

Trademark protection can be beneficial in protecting your brand and brand recognition. Determining the proper basis for filing trademark registration requires caution. It is advisable to discuss your trademark use with a registered trademark agent to avoid adverse consequences.

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