Actual Use vs Analogous Use

10 June, 2024
Nyall Engfield

Actual Use vs Analogous Use

There are two different standards of use depending on whether the issue is the kind of use which will support the validity of a trademark registration, termed actual use, or which will establish priority of use over a rival which results in ownership of the disputed mark, called analogous use.

Actual Use

Definition:

Actual use of a trademark refers to the real, concrete use of the mark in commerce. This involves placing the mark on goods or services and offering them for sale or trade in a manner that reaches consumers.

Examples:

Selling products with the trademark on labels or packaging. This would be best shown by photos of the trademark on them, or photos of the packaging beside the trademark. Documents showing dates of sale like sales records and shipping receipt will help support a first use date.
Offering services under the trademark through advertisements or in a business setting. Usually this is a website that describes the services.
Displaying the trademark on a website where products or services can be purchased. This may be a product listing like an Amazon or Etsy listing, and should show the trademark in the title or on one or more images. It must have a Buy Now button or some means to purchase the goods.

Legal Significance:

Actual use is required to obtain federal trademark registration in the United States. A mark must actually be used on or in connection with the goods or services IOW, LLC v. Breus, 425 F. Supp. 3d 1175. It demonstrates that the trademark is being used in a genuine, commercial manner.
It establishes the priority date of the trademark, which is the date from which the trademark rights are effective. Be careful about the date that you use, since it is one of the first challenges you receive on opposition, cancellation or re-examination. Make sure you can support that date with evidence.
Provides evidence of the mark's presence in the marketplace, supporting claims of distinctiveness and consumer recognition.

Analogous Use

Definition:

Analogous use refers to activities that fall short of actual sales but are still sufficient to establish a trademark’s association with certain goods or services. This use is preparatory and aims to create awareness of the mark before actual commercial sales begin.

Examples:

Advertising and promotional activities, such as flyers, brochures, and advertisements announcing an upcoming product or service launch.
Participation in trade shows where the mark is prominently displayed.
Announcements in industry publications or media about future product or service offerings.

Legal Significance:

Analogous use can help establish a priority date earlier than the actual use date, especially in cases of trademark disputes. This is important in determining who has the superior right to use the trademark.
It can provide evidence of an intention to use the mark in commerce and establish a reputation or goodwill associated with the mark before actual sales occur.
However, analogous use alone is generally insufficient for federal registration. It must be followed by actual use in commerce to complete the registration process. Specimens of use that show "Coming Soon" or a Kickstarter campaign that has not shipped the product yet, will fail to support an in-use claim.

Key Differences

Nature of Use:
- Actual Use: Involves tangible, commercial transactions with the trademark applied to goods or services. Items and payment exchanging hands for example.
- Analogous Use: Involves preparatory activities aimed at creating public awareness and association with the trademark.
Legal Requirements:
- Actual Use: Required for federal trademark registration. Required to withstand challenged from Oppositions, Cancellations and Re-examinations.
- Analogous Use: Can help establish an earlier priority date but must be followed by actual use for full trademark rights.
Evidence:
- Actual Use: Requires proof of sales, marketing, and commercial availability. Sales receipts and shipping receipts can be helpful.
- Analogous Use: Requires proof of advertising, promotional activities, and public announcements.

The doctrine of analogous use, where it applies, eases the technical requirements for trademarks and service marks in cases where a claimant asserts priority on the basis of earlier analogous use of the mark. However, the doctrine has not been stretched so far as to obviate the requirement that a party show eventual actual use for purposes of registration IOW, LLC v. Breus, 425 F. Supp. 3d 1175.

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