Cognate's Trademark Blog

Trademark “Use” P2: Proving Use – Jurisdictions, Trademark Classes (or Classifications) and “Ongoing Use”

In order to enforce and defend trademark rights, companies should be able to prove where, when and how their trademarks have been used. In my previous post, I outlined what constitutes trademark use and the two systems countries use to determine priority in trademark rights (first-to-use and first-to-file).

This week I want to take a look at three additional concepts crucial to understanding how trademark rights are earned and protected: 1) jurisdiction 2) classification and 3) ongoing use.

Each of the concepts listed above can require an associated proof in order to effectively police trademark rights. Let’s dive in.

1) Jurisdiction: Each country (or in some cases groups of countries, like the European Union) has its own trademark laws and systems for enforcing trademark rights. Whether that jurisdiction is first-to-use or first-to-file, companies must be able to prove their trademark use in each country or jurisdiction in which they operate (for more on why companies in first-to-file jurisdictions may need to prove use see my last post).

In the United States, common law trademark rights can even vary by the geographic region in which the trademark is used (more on common law trademarks also in my last post). For example, a company operating exclusively in the southeastern United States may have earned common law trademark rights in that region, but would have no valid claim to stop others from using their trademark in the northwestern United States if they have not conducted business in that region or received a federal trademark registration.

2) ClassificationIn trademark offices worldwide, trademark rights are generally broken down by industry, officially called “classifications” or “classes.” Most trademark offices use the 45 international “Nice” classifications (see here for a complete list).

Since the purpose of a trademark is to avoid confusion amongst customers, it is reasonable that two companies can use identical trademarks in unrelated industries, and there will be no resulting likelihood of confusion amongst consumers.

For instance, “Delta” is used in connection with an airline carrier, a company that makes faucets and other plumbing fixtures, a dental insurance company, and many other companies. Consumers aren’t likely to book a flight thinking it will be operated by the faucet maker, nor buy a faucet for a kitchen sink and think it came from the dental insurance provider.

If a company wishes to claim trademark use in multiple classes, it needs to have strong proof documentation supporting those claims.

3) Ongoing Use: Even when a company secures its trademark rights in one or more jurisdictions, mark owners must be able to prove both when trademark use began (especially important in first-to-use countries) and that the mark has been used continuously in the same manner over time.

If a company cannot adequately prove ongoing use, they may not be able to enforce or maintain their trademark and lose rights in their registration.

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