What does it mean to prove "use" of a trademark?

Protecting intellectual property with a trademark is an important step in securing ownership and exclusive use of unique creations like brand names and logos. However, simply getting the trademark does not mean that the goods or services in question have indefinite protection. In fact, other parties can lawfully use the protected name or creation if the trademark holder does not meet use requirements.

Proving use

When owners register for a trademark, or when they want to renew a trademark, they must prove "use." This means that they must show they are actively using the goods or services they trademarked, and that they remain in the same form. Proving use could include pictures of a product bearing the name or advertisements showing the material in use.

However, it is important to understand that the requirements for proving use vary between countries. This means that even if you meet the requirements for proving use in the U.S., you may not meet the requirements in another country.

If that happens, a company outside the U.S. could use protected material without consequence if it successfully argues that the holder cannot prove use.

A big deal

An example of this is the case of fast food giant McDonald's and a much smaller burger-and-fries restaurant chain in Ireland. Reports note that McDonald's contacted the smaller chain, called Supermac's, to stop them from trademarking the name "Supermac." McDonald's claimed that the name was too close to their own product, the Bic Mac, and argued that trademarking it would cause confusion.

Supermac's brought the case before the EU Intellectual Property Office, which recently sided with the smaller chain. The EUIPO stated that McDonald's failed to prove use according to EU law. McDonald's plans to appeal the ruling.

Disputing use

U.S. companies must prove that they are using a trademark in order to continue to hold it. Considering all that can be at stake in these cases, legal guidance can be crucial if you need assistance in proving use or want to build a case against another company that cannot prove use.

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