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The date of first use is one of the most important pieces of information you provide in your trademark application to the United States Patent and Trademark Office. Establishing that your mark is in use is a vital part of the trademark registration process. Absent the “use” component, a registrable trademark does not exist — it is merely a logo, slogan, or design. However, it is essential to understand what “first use” in trademark law means and how it is established to avoid any mistakes in your trademark application or negative consequences to your protective rights.
The USPTO recognizes two different types of dates of first use: a date of first use anywhere and a date of first use in commerce. The “date of first use anywhere” is defined as the date on which the goods were first sold or transported — or the services were first rendered under the mark. Specifically, such use must have been bona fide and in the ordinary course of trade. “Anywhere” refers to use within the United States or elsewhere.
It's crucial to distinguish “use anywhere” from “use in commerce” to avoid denial of your application. While these might be the same date, recording the wrong date of use can also result in the trademark being declared void ab initio pursuant to Trademark Act Section 1(a) if registration of the mark is challenged. The date of first use in commerce is the date the goods were first sold or transported (or the services were rendered) under the mark in interstate commerce or commerce between the United States and a foreign country. The use of the mark must have been bona fide and in the ordinary course of trade.
It can sometimes be challenging to determine the date of first use, particularly in cases where the goods or services were being developed over a period of time. If the actual date is unknown, the month and year can be documented in the trademark application, and the USPTO would consider the last day of that month as the date of first use. In the event only the year of first use is known, and there is no specified month and day, the USPTO will presume the date is December 31 of that year.
If you are filing a trademark application based on use in commerce, it’s essential to understand that the USPTO requires bona fide sales. In other words, a substantial amount of sales must have occurred — the token sale of one product will not qualify for trademark protection. While there is no set criteria regarding the exact number of sales that must be made, an applicant must establish a “good faith effort to establish a trade.” Sham transactions carried out merely to secure trademark rights are not sufficient under the law for the purposes of registering a trademark.
The following types of uses would not be considered sufficient to qualify as bona fide sales for the purpose of establishing a date of use under trademark law:
The USPTO must be provided with a date of first use that is as definite as possible. But should it be necessary to make any changes to a date of first use after a trademark application is submitted, an amendment may be filed. However, the amendment must be verified and supported with an affidavit or declaration. If the date of first use is later than the date on which the application was signed (but before it was filed), the USPTO permits you to clarify the date of first use since an applicant is unable to attest to use in the future.
The process of filing a trademark application with the USPTO is complex and it is critical to have a trademark attorney by your side who can assist you with filing your application correctly. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC helps business owners, entrepreneurs, and startups with a wide variety of trademark matters. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help you protect your most important asset — your trademark.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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