The use of a trademark is crucial to preserve the rights in the mark. However, whereas in the US the statement of use is essential to maintain the registration, in the EU, it does not exist. Let’s take a look.

The registration of a trademark grants the exclusive right to use a particular sign to identify a good or a service in the market and prevent others from using it without the appropriate authorization. In other words, it could be said that it is the first commandment of trademark law.

But is this right acquired and maintained in the same manner everywhere?

The answer is “no”, since the legal system varies in each country or region. This could be the second commandment, and it is this aspect that we will be looking at here. However, this article does not seek to lay down the ten commandments of trademark registration and protection. The list would probably include more than ten and the order would also vary depending on subjective criteria. Instead, we will offer a little insight into the differences between the EU and US systems, and look at the great unknown for European users: the statement of use.

In the EU, rights in a trademark are based on the principle of registration, that is, rights are obtained by registering a trademark at the European Union Intellectual Property Office (EUIPO) or the national offices of the member States.

However, in the US, rights in a trademark arise from use, that is, from using the mark in commerce, even if it has not been registered. Registration of a trademark at the United States Patent and Trademark Office (USPTO) is optional but offers a series of advantages such as i) the presumption of validity and ownership of the trademark, ii) the right to use the symbol ® of a registered trademark, iii) protection against the registration of confusingly similar marks through the citation of earlier marks by the USPTO, iv) the filing of oppositions against similar applications at the USPTO by the owner of the trademark or v) access to international cooperation mechanisms such as the Madrid system, for the international registration of trademarks.

This different basis does not mean that the use of a trademark is irrelevant in the EU. On the contrary, the use of a trademark is indispensable to safeguard the rights in the mark. However, it does give rise to a formal difference when maintaining the registration. Statements of use do not exist in the EU, either as a prior requirement or after registration and use of the trademark is not verified periodically by the EUIPO, but instead must be questioned by any interested third parties who may request the cancellation of the registration of a trademark that has not been used for an uninterrupted period of five years.

The owner of a registered trademark in the US on the other hand, must also prove that it is using the mark by filing a Statement of Use periodically at the USPTO.

US regulations require this proof of use to avoid the registration of trademarks that are not used or which are abandoned and to ensure that the register reflects the reality of the market.

Failure to file the statement of use by the deadlines established leads to the automatic cancellation of the registration by the USPTO.

The statement of use is a sworn statement by the owner stating that they are using the mark in trade for the goods and/or services it covers and must be accompanied by a specimen or sample of the trademark as used in the United States.

A specimen can be a label, pacakging, ad, catalog, website or any other document or material containing the mark as used in the US.

Statements of use must be filed at various key points in time: between the fifth and sixth year after the date of registration, between the ninth and tenth year following the date of registration and every ten years with each renewal.

Ultimately, use of a mark is essential both in the US and EU trademark systems, albeit expressed in a different manner, and it is fundamental to be aware of the characteristics of each system and to comply with the requirements and obligations arising from the use of the mark.

It is also important for owners of trademarks registered in the US to be aware of the time periods and requirements to submit the statement of use, and to obtain specialized professional advice to help them meet their legal obligations and protect their most valuable asset.

 

Fernando Rubiano

Garrigues Intellectual Property Department