Proof of use: what the decision maker looks at
When a trade mark owner is challenged to prove genuine use, the decision maker looks at who used the mark, where, for which goods or services, over what period, and at what commercial scale. Evidence is weighed as a whole, not item by item. A thin or token showing rarely survives; what carries weight is a coherent commercial pattern that a buyer would recognise.
Practical consequence
A proof of use challenge does not simply test paperwork. It resets the scope of the registration. Classes or specific goods with no supporting evidence can be struck out, while classes with a solid file survive untouched. The risk is asymmetric: a strong mark used for ten years can still lose protection for the one product line nobody documented properly.
The timing risk is separate from the evidentiary risk. Once a request for proof of use lands, the response window is fixed and does not usually extend itself. Owners who treat the request as routine correspondence, rather than as a filing deadline, lose classes they could have kept. This matters most where the mark also sits as security: if a portfolio is a portfolio is pledged to a lender patent when a proof of use challenge is filed, the lender's collateral value can shrink before anyone outside the file notices.
What to do
- Owner: pull together dated evidence for every contested class before counsel starts drafting anything.
- Counsel: map each piece of evidence to a specific class, not to the mark in general.
- Business team: supply sales figures, distribution lists and marketing spend broken down by product line.
- Counsel: prepare a signed statement to cover any period where documentary evidence is thin.
- Counsel: file within the response window and keep a reserve of supplementary evidence for the rebuttal round.
The document assembly logic is not unique to trade marks. Anyone who has run an open source compliance review will recognise the pattern: gather everything first, then sort it against a fixed list of categories, then fill the gaps last.
Who decides
| Stage | What happens | Typical timing |
|---|---|---|
| Request for proof | The office or the opposing side asks the owner to substantiate use | Set out in the request itself, not standard across every case |
| Evidence submission | Owner files invoices, catalogues, advertising material and sales data, all dated | A single response window, rarely extended without a stated reason |
| Review and rebuttal | The challenger comments; the deciding body weighs the file as a whole | One further exchange, then the file closes |
| Decision | The mark is confirmed for some or all classes, or narrowed | Issued once submissions close; appeal remains open |
The proceeding runs before the office handling the underlying case at first instance. Where the challenge is raised inside opposition or cancellation proceedings, the same office decides both questions together. An unsatisfied party can take the matter to an appeal body or a court, depending on where the proceeding started.
Forks
If your mark has only been used in one member state, the file still needs to show that the use was genuine and not merely token, even inside a small market. If use was interrupted for a documented reason such as a licensing gap or a market withdrawal, explain the interruption rather than papering over it with unrelated evidence. If the same brand is carried into a tokenised product line, the underlying supply arrangements matter too; see how supply change procedure token issuance documents to prepare for how that documentation is typically assembled.
Limit
This page does not set the evidentiary bar for any single class of goods or services, and it does not cover how customs authorities intercept infringing goods at the border, which runs on separate machinery entirely. It also does not replace a review of your specific file: two portfolios with similar figures can produce different outcomes depending on how the evidence is organised.
Sources and limits
This material reflects how proof of use proceedings are typically run in current practice, last reviewed as of this publication date. It does not quote specific statutory deadlines, because those vary by forum and by the stage of the proceeding; the office running your file will state the applicable window in its own correspondence. For a sense of what a comparable filing costs before anything is signed, see asset report before a licence is signed in practice.
Frequently asked questions
How long does proof of use take in practice?
The response window is fixed by the forum handling the case and stated in the request. Once submissions close and any rebuttal round finishes, the decision typically follows within a further period set by the same forum, not by the parties.
Which documents are needed to start?
Dated invoices, catalogues, advertising material and sales figures, organised by class rather than by date alone. Where documentary gaps exist, a signed statement from someone with direct knowledge of the trading pattern fills the gap.
What happens if the other side does not respond?
A challenger who files a request and then goes silent does not stop the proceeding. The deciding body still reviews the evidence on file and issues a decision on the merits of what was submitted.
Related publications
For a related procedure inside the same registry, see how surrender and partial surrender trade mark what the decision maker looks at when an owner chooses to give up rights rather than defend them.