Young Practitioners Committee Discusses EU, U.S. Trademark Use Evidence

Published: August 4, 2021

Daniela Rojas

Daniela Rojas Pirkey Barber PLLC Austin, Texas, USA Young Practitioners Committee

The “evidence of use” requirement is a common problem facing trademark owners in the protection and maintenance of trademark rights. In a virtual discussion hosted by INTA’s Young Practitioners Committee on July 15, panelists shared advice on how to navigate this tricky process in the European Union and the United States.

Leading the discussion, Alexandra Holt (Greenberg Traurig, USA) and Florica Rus (Bomhard IP, Spain) explained the evidence of use requirement, and the differences between this requirement in their respective jurisdictions. They also provided useful tips on submitting acceptable specimens of use.

The U.S.

Discussing the U.S. requirements, Ms. Holt explained that there is a twofold reason why evidence of use is required in interstate commerce to register and maintain trademark rights.

First, she said, “Trademark rights are based on use, so it only makes sense if these rights can only arise through use before the Trademark Office issues a registration.” Second, “U.S. trademark rights are not a property right. It’s really just a consumer protection statute to protect consumers from buying goods thinking they come from one company where they have a different origin.”

This is probably the biggest difference between the United States, a first-to-use jurisdiction, and most of the rest of the world, where first-to-file systems are in place.

Ms. Holt emphasized the importance of asking clients the right questions at the start of the process. This is to make sure they understand that, in order to preserve their rights, the trademarks must be used as they were filed.

“As far as applications that cover a number of goods and services, the good thing is that applicants don’t have to submit a specimen of use for every single good or service covered by the application,” she noted. However, the trademark must be used in connection with the goods/services filed. Furthermore, she explained, to avoid putting the client in a position of signing an incorrect declaration of use or a potential audit from the U.S. Patent and Trademark Office, it is important to lock down an appropriate specimen and first use date.

Among the many practical tips Ms. Holt offered, she emphasized that specimens need to capture actual use of the mark in commerce, and, thus, practitioners should always avoid filing mockups, website drafts, or digitally altered images.

The EU

In contrast, Ms. Rus said proof of use is not required to register a trademark in the EU. However, the owner is obligated to use the registered mark in the EU within a period of five years following its registration in connection with the goods and services covered in the application. If the mark is not used within the prescribed legal timeframe, the registration becomes vulnerable to cancellation and the European Union Intellectual Property Office (EUIPO) can impose sanctions.

While describing the EU guidelines on use, Ms. Rus explained some of the EU courts’ principles, including what is considered genuine use. She clarified that even though a mark could be well known, “effective and efficient use of the mark in the market must be proven” because the EUIPO doesn’t determine ex officio if there is genuine use of the mark.

Ms. Rus shared examples of what has been considered sufficient and insufficient use, leaving attendees with a clear understanding how the EUIPO approaches the evidence of use requirement.

Allison Cantor (ESPN, USA) moderated the panel. Participants continued the discussion during three networking sessions.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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