USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Bona fide use of the mark in the US must be shown in connection with the goods or services identified in the registration by filing specimens for each class of goods or services covered by the registration between the fifth and sixth year of registration with a declara - tion attesting to the use. There is a six-month grace period for late filings. A trade mark registration can be renewed anytime between the ninth and tenth year, with a six-month grace period. Renewal also requires the owner to attest to bona fide use and provide specimens as above. At the time of maintenance or renewal, the registra - tion can only maintain goods and services for which the trade mark is actually being used. Any goods or services not provided in commerce must be deleted or the registration may be invalidated. The PTO may audit declarations of use and renewals and require the registrant to file additional specimens. If the registrant cannot provide the additional speci - mens showing use of every item covered in the regis - tration, the PTO will delete those goods and services from the registration or even cancel the registration as a whole. Once a registration is cancelled, it cannot be revived unless there are extraordinary circumstances. 4.4 Application Requirements The requirements to apply for the registration of a trade mark are: • Name and address of the owner. Only the owner of the mark may file. • Drawing of the mark. • Description of the goods and services with speci - ficity using clear terms arranged by class. The PTO now provides standard descriptions of goods and services. Applicants seeking custom goods and services descriptions must pay an additional fee. An application that seeks registration for a general category will be asked to add specificity. Multi- class applications are permitted.
• For use-based applications, specimens showing bona fide use in commerce and the dates of first use anywhere and “in commerce” for each class. • Specimens showing use and first use dates are not needed at the time of filing for intent to use appli - cations or applications filed through the Madrid Protocol or based on a foreign registration. How - ever, the applicant will need to attest that it has a “bona fide intent to use” the mark. See 4.5 Use in Commerce Prior to Registration . (An intent to use applicant will need to submit specimens of use and first use dates before the mark will be registered.) • Declaration signed on oath by a person with knowl - edge of the matters set out in the application. • Subject to certain exceptions, applicants whose domicile is not within the US must be represented by a US attorney. The 2026 PTO fees can be found at its website . 4.5 Use in Commerce Prior to Registration An application may be filed based on: (i) use, (ii) intent to use, (iii) the Madrid Protocol, or (iv) a registration from a foreign country where the applicant has a real commercial establishment. No user of a trade mark is required to register a trade mark registered: (1) based on a foreign registration; or (2) under the Madrid Protocol. However, the applicant must declare that it has a bona fide intention to use the mark in US commerce. Applications filed based on use require that the mark is in use at the time of filing. Specimens and dates of first use for each class are also required. Specimens are examined for suitability. Mock-ups or examples not actually in use do not suffice. Instead, the specimen must show use of the mark in asso - ciation with the good or service offered. For goods, this means that the mark should generally be on the good itself, on the packaging, or at the point of sale. Mere advertising is not a sufficient specimen of use of goods. For services, the PTO will accept specimens showing the mark on advertising, but there must be a clear association between the mark and the services.
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