World IP Review
Trademark rights are acquired through use of a mark in commerce. Applicants must correctly identify the goods and services with which their mark is intended for registration or risk refusal or cancellation.
Correctly identifying the goods and services in a US trademark application is essential for applicants to satisfy the ‘use in commerce’ requirement for registration. For applicants filed under 15 USC §1051(b) (known as ‘Section 1(b)’) or §1051(a) (known as ‘Section 1(a)’), actual commercial use of the trademark in connection with the goods or services listed in the application must be established before a registration is issued. While proof of actual use is not required to obtain registration under Sections 44(e) or 66(a), the resulting registrations may be susceptible to cancellation if the applicant lacked the requisite intent to use the mark on all of the listed goods or services at the time of filing or ceases to use the mark in connection with all of the identified goods or services after the registration is issued. Regardless of the registration basis, continued use of a mark in connection with the goods or services identified is essential to maintaining the registration.