Author: Stefano Ferro

How to register a Trademark

In Italy, and more generally in the European Union, the hurdle to overcome for those who create a trademark and want to render it legally unassailable is to obtain a registration. A trademark application is then filed with the competent Trade Mark Office (UIBM for Italy, EUIPO for the European Union). The Office conducts an examination of the trademark to verify that it is not descriptive, generic, or offensive, and then the trademark application is published to allow any interested third parties to file an opposition. In other Countries (like the U.S. and China), the trademark, before being published for opposition, is also examined by comparing it with earlier trademarks of third parties and may be thus refused ex officio. Thereafter, third parties can file opposition.

Cancellation of a Trademark: how it works

All jurisdictions impose a requirement to use on the registered trademark owner. There is then a period after registration (generally five years, three in some jurisdictions, like China or the US) after which the mark, if not used, may be subject to cancellation action by third parties. The party who initiates a cancellation action for non-use must provide, in many jurisdictions, a standard of proof in support of his or her claims (complete proof of another’s non-use not being logically possible, as in all cases of probatio diabolica [the legal requirement to provide an impossible proof]).

The burden of use in the U.S. legal system

In the U.S., the requirement to use a trademark not only exists, but is significantly strengthened compared to other equally important Countries.

Already at the time of filing a trademark application in the U.S., the applicant is asked to state whether the mark is already in use (“use in commerce” basis) or whether there is only an intention to use (“intent-to-use” basis). In some cases (filing based on a trademark registered abroad; international filing under the Madrid Protocol) the question of trademark use does not arise before registration, but the burden is triggered anyway once three years have passed since registration.

Owners of trademarks registered in the U.S. are well aware of the need to confirm from time to time that their trademarks continue to be used there. In fact, a declaration of use is required for each trademark between the 5th and 6th year after registration, then at the expiration of the decade and at each 10-year renewal.

Proof of use: what it is and how it works

At least one proof of use for each product class involved must be attached to each declaration of use. The evidence of use usually consists of photos of the products or their packaging as sold in the U.S., and the business of collecting evidence in recent years has been facilitated by the practice of e-commerce, which allows the mark to be seen to appear on products for sale (even if not in “physical” stores) in the U.S. market. Gathering evidence of use for service product classes is, for reasons that can be imagined, more complicated; once more, the corporate website, if it has an English version and if the activities refer in any way to the U.S., can help.

The legislative changes for companies holding a Trademark in the U.S.

Continued control over use in the ways described above meets the need to clear the registry fromunused trademarks, taking into account a scenario in which obtaining a trademark that has not already been registered by others is becoming increasingly difficult.

Against this backdrop is a recent piece of legislation (the Trademark Modernization Act), which has been in effect since late 2021 but has only come into full swing in recent months, which facilitates the deletion (in whole or in part) of unused trademarks from the registry maintained by the USPTO. This facilitation is mainly due to the introduction of two new procedures:

  • removal (expungement proceeding), which covers the case of a trademark never used in commerce and is limited to cases where the basis for filing is “use in commerce”, foreign registration or Madrid Protocol; the time limit for initiating the procedure is between 3 and 10 years from the date of registration;
  • re-examination proceeding, which concerns the case of a trademark not yet used in commerce as of a certain date (that of filing for the “use in commerce” basis or that of the “Statement of Use” for the “intent-to-use” basis); this procedure must be initiated within 5 years from the date of registration.

In both cases, it is interesting to note that the procedure can be initiated not only by an interested third party, but also by the USPTO ex officio (director-initiated proceeding). For procedures initiated at the request of a party, it will be necessary to attach at least one principle of proof, which cannot, however, consist of a simple statement, e.g., regarding the fact that an investigative activity was carried out and that the use of the trademark was not detected, but which must also disclose the individual activities carried out (e.g., specifying in which Internet sites and in which physical stores the search was carried out with negative results, and what search keys were used).

Data updated to early March 2024 show that, in just over 2 years, about 3,000 removal and re-examination proceedings have been initiated, and about 40% of these proceedings were initiated ex officio by the USPTO. There is now an established case history and trend showing an increase in the use of the two new procedures, so Italian companies will also need to take this trend into account in their upcoming filings.

Failure to use: the main cases

Among the most common cases in which trademark use was found to be unsubstantiated (for the entire list of goods/services or for some of the goods/services originally listed) we have:

  • absence of the brand from major e-commerce sites;
  • brand presence on e-commerce sites but inability to purchase products from an address located in the U.S;
  • example of the registered trademark other than that which appears on the company’s website and/or e-commerce sites where the referenced products are sold;
  • owner not present in the US market and absence of local distributors;
  • cancellation of the same trademark for non-use in the country of origin;
  • the fact that the trademark is declared “for sale” on Internet sites dedicated to buying and selling registered trademarks.

Means of defence

The trademark holder is given a time limit to defend in the proceedings and prove that the trademark has been used. Proof of use, in addition to addressing the exact products that are being challenged, will need to show that the use occurred in the United States. Such proof can also be derived from the company’s Internet site, and in that case it will be appropriate to both verify that the trademark appearing on the website matches the one registered in the U.S. and to prove that the website’s contents concern an actual offering in the U.S. market of the goods or services involved.

In conclusion, it is therefore advisable, in order to avoid problems with distributors and customers in the U.S., to file the trademark that will then actually be used in that market, with a realistic list of goods or services whose use can be proven. Trademark procedures in the US are more complex and more expensive than the corresponding European procedures,-that is why it is always appropriate that the approach, when the U.S. is involved, be focused and more rigorous than in other jurisdictions.