How Not to Lose Your Trademark

People sometimes believe that once they file to register their trademark it’s theirs forever, whether they use it or not. But that’s not how it works.

As the US Patent and Trademark Office (USPTO) explains, you must specify the reason why you’re allowed to federally register your trademark. This is called your “filing basis.”

“Use in commerce” means that you’re already using your trademark in selling or transporting your goods out of state or providing services to customers who live outside the state where you’re based.

“Intent to use,” as the USPTO explains, means

you haven’t started using your trademark in commerce, but you have a bona fide intent to do so within the next three to four years.

For example, you might intend to make and sell jewelry, but you’re just at the point of sourcing your materials—you haven’t started making or selling jewelry yet. Or you might currently be providing personal training services only to local clients in your state, but in the next year you’ll be expanding your services into the neighboring state.

Although you can apply to register your trademark with an intent-to-use basis, you cannot actually register your trademark until you show that you’ve started using it in commerce and you file the proper TEAS form.

A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.

A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.

If you file your proposed trademark on an “intent to use” basis, you need to use it in commerce within a defined time. As the USPTO states,

There are three periods during which you can claim use in commerce before your mark can register:

  1. Before your application is approved for publication
    • You may claim use in commerce between the date you filed your application and the date the USPTO examining attorney approves your mark for publication in our Trademark Official Gazette (TMOG), a weekly online publication.
    • During this period, you would file an Amendment to Allege Use to claim use in commerce (see "How do I claim use in commerce" below for how to file).
  2. Within six months of the Notice of Allowance (NOA) issue date
    • You may claim use in commerce within the first six months after the date we issue a Notice of Allowance (or NOA, pronounced “noah”), a notice indicating your mark has been “allowed” for registration (but has not yet registered).
    • During this period, you would file a Statement of Use to claim use of your mark in commerce (see "How do I claim use in commerce" for how to file).
  3. Within a granted extension of time after the NOA issue date
    • You may claim use in commerce after we issue a NOA if you file a Request for Extension of Time to File a Statement of Use and pay the required fee.
    • You must file the Statement of Use within the extension period (see "How do I claim use in commerce" for how to file).

Also, if you stop using your trademark for a period of three or more years, it’s called “non-use abandonment” and you can lose your trademark,

According to the Trademark Act, trademarks are considered abandoned:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

Categories: Trademarks