TTAB Issues Important Precedential Decision on Trademark "Use in Commerce": A Warning for Brand Owners

DEREK FAHEY, ESQ.

The Trademark Trial and Appeal Board (TTAB) recently issued a significant precedential decision that serves as an important reminder for trademark applicants filing Statements of Use. In In re Everwise Credit Union, the Board cancelled a federal trademark registration after concluding that the applicant had not made bona fide use of its mark in commerce by the applicable Statement of Use deadline. The decision underscores that “token use” or merely displaying a mark on a website or in limited promotional materials may not satisfy the Trademark Act's use requirements.

I. The Background

Everwise Credit Union originally filed an intent-to-use application for the mark EVERWISE CREDIT UNION covering a broad range of financial services. After receiving multiple extensions of time, the applicant ultimately filed its Statement of Use on the final statutory deadline, claiming use of the mark in commerce.

Shortly after the registration issued, a third party filed a petition for reexamination under the Trademark Modernization Act (TMA), arguing that the mark had not actually been used in commerce by the relevant filing deadline. The USPTO instituted the reexamination proceeding and ultimately determined that the evidence submitted by the registrant failed to establish qualifying trademark use. The TTAB affirmed that determination and ordered cancellation of the registration.

II. The Trademark Modernization Act in Action

The case illustrates one of the most significant procedural changes introduced by the Trademark Modernization Act of 2020. The Act created new ex parte proceedings that permit the USPTO to reexamine registrations when evidence suggests that a registered mark was not actually in use as of the legally required date.

Unlike traditional cancellation proceedings before the TTAB, these reexamination proceedings allow the USPTO to evaluate directly whether the registrant can substantiate use of the mark through competent evidence. Once a prima facie showing of nonuse is established, the burden shifts to the registrant to produce documentation demonstrating qualifying use in commerce as of the relevant date.

III. Why the Registrant's Evidence Was Not Enough

The registrant argued that its website displayed the phrase "Everwise Credit Union" in connection with its financial services and submitted declarations explaining that it was actively transitioning to the new brand.

The Board, however, closely examined the overall context of the evidence. It found that the website primarily identified the institution as "Teachers Credit Union" or "TCU," while the words "Everwise Credit Union" appeared only minimally, including in a tagline and scattered references throughout the website. The Board concluded that consumers would not perceive those limited references as identifying the source of the financial services.

Perhaps more importantly, the Board found substantial evidence that the applicant was still preparing for a future rebranding effort. Materials introduced into the record showed that the institution publicly announced it would officially become Everwise Credit Union on June 26, 2023—more than two months after the Statement of Use deadline. The subsequent rollout of the new branding demonstrated that the mark had not yet entered ordinary commercial use when the Statement of Use was filed.

IV. The Difference Between Token Use and Bona Fide Use

The decision reinforces a principle that has long existed in trademark law but has received renewed attention following the enactment of the Trademark Modernization Act.

To support a federal trademark registration, use must be bona fide use in the ordinary course of trade. Use made merely to reserve rights in a mark - or what courts have historically referred to as "token use" - does not satisfy the statutory requirement.

In Everwise, the Board determined that placing the new mark in a limited portion of a webpage while continuing to conduct business primarily under the legacy brand did not constitute the type of genuine marketplace use contemplated by the Trademark Act. Instead, the evidence suggested that the applicant was attempting to preserve rights in a mark that would not actually be launched until a later date.

V. Practical Lessons for Trademark Owners

This decision provides several important reminders for businesses preparing to launch new brands.

First, companies should avoid filing a Statement of Use simply because a statutory deadline has arrived. The filing must accurately reflect that the mark is already being used in the ordinary course of business.

Second, businesses undergoing rebranding efforts should ensure that the new mark is genuinely functioning as the source identifier for their goods or services before claiming use. Internal planning, marketing announcements, or references to an upcoming brand transition generally are not enough.

Third, companies should maintain robust evidence demonstrating marketplace use. Depending on the nature of the business, this may include websites, customer communications, invoices, brochures, signage, product packaging, advertising, photographs, or other materials showing that consumers encounter the mark as the identifier of the business's goods or services.

Finally, if a business has not yet begun bona fide commercial use when the Statement of Use deadline approaches, filing a new intent-to-use application may be a safer strategy than submitting a Statement of Use that cannot be fully supported.

VI. Why This Decision Matters

Because the Board designated In re Everwise Credit Union as precedential, the decision will guide future Trademark Office examinations and reexamination proceedings. It also signals that the USPTO intends to scrutinize claims of trademark use closely, particularly where the evidence suggests that a mark remains in the early stages of a rebranding initiative.

For trademark owners, the message is straightforward: Federal registrations remain powerful business assets, but they depend on actual commercial use. Businesses should carefully evaluate whether a mark has truly entered the marketplace before certifying use to the USPTO. Proper planning at the application stage can help avoid costly cancellation proceedings and preserve valuable trademark rights.