What If I Am Using A Trademark But Can’t Prove It?
If you’re using a trademark, but can’t prove your use, then you have two choices: Wait until you can prove use to apply based on your actual use of the trademark, or apply based on an intent to use the trademark in the future, and then prove your use later.
Just as a refresher, remember that there are two ways to file a trademark. You can either file based on your actual use or you can file based on your intended use. If you want to file based on your actual use, then at the time of filing, you must submit what is called a specimen. And I know that sounds like the little jar that you leave in the cabinet at the doctor’s office, but in trademark land, it’s something entirely different. When you apply for a trademark based on your actual use of the mark in commerce, you must show an acceptable proof of use — also known as a “specimen” — when you file the trademark application. But what if for some reason, you can’t prove your use?
In trademark land, a specimen is proof that you’re actually using the mark as a trademark. And you must submit that with any application in which you allege that you’re using currently the trademark. What if you can’t do that? There might be a number of reasons why you might not be able to do that. For example, maybe your website got hacked. And so now the page that you would have screenshotted to prove your use is gone, but you need to file that trademark application.
If you can’t prove your use in a manner that will be acceptable to the trademark examiner, but you want to file right away to protect your trademark rights and your priority date, then you have the option to file your trademark application based on an intent to use the mark in commerce, and then when you have the ability to produce a specimen, you can file that specimen along with the date of first use — which may be years or months ago — in a document that is called a Statement of Use or Amendment to Allege Use filed with the United States Patent and Trademark Office.
Filing a trademark application using the “intent to use” filing basis doesn’t necessarily mean that you’re not using the trademark. An applicant might file this way because they are using the mark, but the use is such that they can’t produce an acceptable specimen. For example, they took down their website because they are rebuilding it, or because it got hacked. They are still using the trademark, and have been using the trademark, but can’t prove it, because the page that is appropriate for a screenshot is not available to screenshot.
So what do you do? Well, there is an option: You can file based on your intent to use the trademark. “But Angela, I’m already using the trademark. Why would I file based on my intent to use?” Well, you would do that because you want to preserve your trademark rights. When you file a trademark application, you get a priority date. And that priority date is the date that you filed the trademark application.
If you don’t file the trademark application, there is the possibility — however small or big, we don’t know — that somebody may, during the time that you are waiting to file your trademark application because you need that specimen, there may be somebody else who might come along and file a trademark application for your similar mark, for your goods or for related goods. And then sorry, but you’re out of luck. You’re not going to be able to get a registration if there is an application on file that eventually goes through that conflicts with your own, you miss the boat.
So how do we avoid missing the boat if we are using the trademark but can’t prove it? We file based on an intent to use. Now, that does not mean that you’re not actually using it. It just means that you can’t prove it. And then later, when we can produce the specimen, we file what’s called an Amendment to Allege Use or a Statement of Use, depending on what procedurally has happened in the trademark application process.
So don’t worry, if you don’t have a specimen or proof of use right now, you can always file based on your intent to use the mark in commerce and then produce that specimen later. But filing the intent to use trademark application preserves your place in line, preserves your priority date, and makes sure that nobody else can sneak in in front of you and file a competing trademark application.
m Angela Langlotz. You can find me online at TrademarkDoctor.net. I’m also on YouTube, and you can ask me any questions below in the comments. I will answer them on a future live and don’t forget to like and subscribe so you get all my newest content.
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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.