USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
• For use-based applications, specimens showing bona fide use in commerce and the dates of first use anywhere and “in com - merce” for each class. • Specimens showing use and first use dates are not needed at the time of filing for intent to use applications or applications filed through the Madrid Protocol or based on a foreign registration. However, the applicant will need to attest that it has a “bona fide intent to use” the mark. See 4.5 Use in Com- merce Prior to Registration . (An intent to use applicant will need to submit specimens of use and first use dates before the mark will register.) • Declaration signed on oath by a person with knowledge of the matters set out in the appli - cation. • Subject to certain exceptions, applicants whose domicile is not within the US must be represented by a US attorney. The 2025 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 com - merce. 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 suf - fice. Instead, the specimen must show use of the mark in association 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 advertis - ing 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. For intent to use applications, the applicant does not need to show use at the time of filing but must do so before the mark matures to registra - tion. An applicant can have up to three years to prove use if extension requests are filed and fees paid. All marks are subject to proof of use between the fifth and sixth year after registration and at renewal. Failure to use a mark may also result in abandonment. 4.6 Consideration of Prior Rights in Registration The PTO reviews the register for conflicting pri - or marks when reviewing an application. If the examiner locates a mark on the register that he/ she believes is confusingly similar, the examiner will either issue a refusal (in the case of a prior registration) or suspend the application (in the case of a pending application). Only active prior applications and registrations can be raised dur - ing examination; common law marks cannot be raised as a bar to registration. 4.7 Revocation, Change, Amendment or Correction of an Application An applicant can withdraw an application.
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