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Sufficient proof of use of trademarks

Disclaimer: The information provided in this factsheet is meant as an educational resource only and should not be construed as legal advice.

Please note: To establish the date of first use for your trademark, you will need to have sales or transport in commerce in the US in the ordinary course of trade

Example 1: You are selling shoes under your trademark and your first customer is a resident of the US who ordered via your website. If the shoes are manufactured in Canada and shipped directly to an end purchaser in the US, then the first date of use in commerce will be the date of first sale via the website. Proper proof of use is a picture of the mark shown on the shoes or their label or packaging. It can also be a screenshot/printout of the website where you are displaying the mark in close proximity to the product with information on how to purchase the shoes.

Please note: The date of first use for services is when you first rendered the services in the US in the normal course of trade.

Example 2: If you wish to provide consulting services under your trademark, the date of first use is the date when you have performed those services for actual customers. Merely offering the services to the public is not enough to obtain a trademark registration. Proper proof of use can be a screenshot/printout of the website displaying the mark near a description of the services.

Example 3: Mad Dogg Athletics Inc. owns the rights to the registered trademark for the term “spinning” and uses it to identify their brand of indoor cycling equipment and instruction. Because the term has become generic to the sport, the trademark is vulnerable to cancellation and has been subject to several attempts.

Example 4: The “Pilates Method” was created by Joseph Pilates as a version of exercise known as “Contrology.”  The trademark to the term “Pilates” was owned by a New York studio, however, in 2000, a judge ruled that the term “Pilates” referred to a type of exercise and invalidated the trademark stating that as, “consumers identify the word ‘Pilates’ as a particular method of exercise, the plaintiff cannot monopolize [it]”.

Key considerations for Canadian companies regarding proof of use for trademarks:

According to Kim Capiau, Registered Trademark Agent at Stratford Intellectual Property, “Use is key in trademark law – it allows you to establish ownership and to maintain your trademark. You can either use your trademark properly or risk losing your trademark, even if you have obtained a trademark registration”.

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