We receive a lot of questions from clients big and small about whether spaces in trademarks make a difference when it comes to registering and enforcing their trademarks. For example:
“I use ‘MYTRADEMARK’ prominently on my website, can someone else register ‘MY TRADEMARK’ with the USPTO?”
“My competitor registered ‘TRADEMARKTRADEMARK’ as one word with the USPTO, but I want to use and register ‘TRADEMARK TRADEMARK’ – does the space matter?”
This analysis is actually more complicated than it seems and this article will explore how spaces affect two different trademark issues – registration vs. enforcement.
Registration Requires Use of the Exact Trademark
When registering a trademark, the USPTO requires the applicant to provide ‘proof of use’ of the trademark that is identical to the trademark for which the applicant applied. That ‘proof of use’ must be used prominently in connection with the trademark’s products or services, positioned away from any other descriptive text or paragraphs not claimed in the application.
For example, if our firm’s logo showed GERBENLAWFIRM as a single word, the USPTO would not likely accept the following as ‘proof of use’ for GERBENLAWFIRM:
When registering a trademark, spaces matter and getting it right is crucial to avoid delays and, in a worst case scenario, being forced to abandon the application.
Typically, the USPTO Examining Attorney will review evidence and issue an “office action” if the specimen does not match the applied-for mark. The filing party must then provide a new specimen that was in use on the date the proof of use was originally filed. To submit a new specimen, the applicant must sign a declaration that the specimen was in use at the time the original proof of use was filed. If this is not true, it can be grounds for cancellation, even if the application is successfully registered.
Sometimes, this can be remedied by amending the basis of an application if its a new application.
However, when filing a Statement of Use (the proof of use filing you make after receiving a Notice of Allowance), you have one shot. If you file the wrong specimen, you will generally not be given the opportunity to remedy the error, and you will need to abandon the application and re-file. This could have catastrophic results: not only will you need to spend more money in filing fees, but you will also lose any filing date you had with the USPTO and will start from the beginning.