Except in a few cases*, a trademark will not be registered until the mark has been used. The Trademark Office won’t register a trademark unless the applicant provides proof of how the mark is used in commerce. This is a reflection of trademark law, which focuses on the fundamental concept that trademark rights arise out of trademark use, because rights are associated with the public’s recognition of a mark – once a mark is used in public, the public has an interest in not being confused by others’ use of similar marks.
In a Section 1(a) trademark application, the applicant must include proof of how the mark is being used in commerce at the time of the filing, because the 1(a) filing basis signifies that the mark is currently being used. In contrast, with a Section 1(b) trademark application, the applicant can provide proof of use of the mark at some time after the application is filed, as long as, at the time of filing, the applicant had an intent to use the mark in the future. There are reasons a person might want to file a 1(b) application instead of waiting to use the mark, and there are reasons a person might want to wait until beginning use to file a trademark application.
Use of the mark has to be shown in a particular way. It has to be use that demonstrates the mark is being used in commerce. Mere advertising for goods is not enough. Letterhead, business cards, invoives, etc. typically aren’t enough. And now, the TTAB has stated that a YouTube video is not enough. As reported over at the TTABlog, without including in the specimen a means for downloading or ordering the goods or services offered over YouTube or other similar web outlets, use is not established:
We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant’s specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof. In re Rogowski, Serial No. 77083475 (December 11, 2012).
So, care must be taken when submitting proof of use of the mark. An improper specimen can jeopardize an application, though some actions can be taken to salvage it. The best practice is to submit a good specimen showing clear use, especially when the use is unquestionable.
* Trademark applications based on foreign registrations do not require proof of use to be registrable. This article will only discuss applications asserting a domestic basis. More on foreign trademark bases here.