During the federal trademark registration process in the United States Patent and Trademark Office (USPTO), entrepreneurs and technology startups inevitably come across the issue of identifying their bona fide date of first use and date of first use in commerce on the federal trademark record.
In the racehorse setting of trademark law, the first to legally use a mark has legal priority and exclusive rights to a trademark, whether it is a word mark, design mark (logo), or slogan.
The “date of first use” and “date of first use in commerce” thus require careful consideration when filing federal trademark applications for registration in the United States Patent and Trademark Office (USPTO).
Brand owners and their intellectual property attorneys must balance the desire to identify the earliest date of first use for priority purposes with the bona fide and ordinary course of trade standards of US trademark registration in the United States Patent and Trademark Office, and under common law.
The USPTO defines the date of first use and the date of first use in commerce as the date when:
(1) the goods were first sold or transported, or the services were first rendered, under the mark, and
(2) such use was bona fide and in the ordinary course of trade.
The date the mark was first used “anywhere” means such use in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type. The date of first use in commerce adds one additional legal requirement: that the use must be in a type of commerce lawfully regulated by the US Congress, or otherwise in interstate commerce. (see TMEP §903.01 and §903.02 ). The date of first use anywhere will always be earlier than or the same as the date of first use in commerce.
The most important element of the date of first use in commerce requirement in trademark registration is typically whether the use is bona fide and in the ordinary course of trade. Many technology startups, mobile application companies, and other businesses promoting goods and services online or through mobile applications on the Apple® App Store or Google® Play Store quite easily satisfy the interstate commerce element of date of first use element in trademark applications because their goods and services across state lines.
However, whether a use is sufficient to constitute use in the ordinary course of trade under the Trademark Act is a legal question that must be analyzed on a case-by-case basis. For example, in Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013), the USPTO Trademark Trial And Appeal Board (TTAB) found that the applicant had not made bona fide use of its mark in commerce because it had not sold or transported goods bearing the mark.
Whether establishing priority by use in commerce or constructive use under the Intent-To-Use Filing option, the date of first use in commerce is among the chief considerations to entrepreneurs and technology startups in the trademark selection and adoption process. An experienced trademark and technology attorney may advise entrepreneurs and tech startups on the use in the commerce requirements pertaining to their specific industry or vertical in the technology section, and how to establish the earliest priority date given the stage of development and consider legal, marketing, and production considerations.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and the “Internet of Things”. David has been recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; david@latml.com.
The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2017. All rights reserved.
