In US Trademark Law priority matters, and the date of first use in commerce for technology startups, entrepreneurs, and other new companies protecting their trademarks, logos, and brand names in the United States Patent and Trademark Office (USPTO) becomes an important legal consideration.
Below is an in depth examination on the specific language set forth in the Trademark Manual of Examining Procedure regarding date of first use in commerce in the US Patent and Trademark Office. (For additional information on these concepts, see our previous blog on trademark date of first use in commerce.)
The USPTO rules relevant to dates of first use are found in TMEP 903 – Dates of Use. Sections 903.01 through 903.03 outline the definitions of “date of first use anywhere” and “date of first use in commerce,” and explain the relationship between those two dates.
The rules increase in complexity starting at TMEP Section 903.04, which discusses the protocol for amending the dates of first use listed in an application.
Any change to the dates of use must be supported by an affidavit or declaration under 37 C.F.R. §2.20. The affidavit or declaration must be signed by someone properly authorized to sign on behalf of the applicant under 37 C.F.R. §2.193(e)(1). In addition, because a §1(a)-based application must properly allege current use of the mark, an applicant must attest to dates of use that are on or before the date such application was signed; an applicant may not allege use that has not yet occurred.
In an application under §1(a), the applicant may amend the dates of use to adopt a date of use that is earlier than the date originally stated or later than the date originally stated, but on or before the application filing date. The applicant may not amend to specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) did not use the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b).
Date of First Use in Commerce Rules in USPTO
With regard to the text of this rule, it is important to immediately draw attention to the mandatory affidavit or declaration, as this requirement is a common thread throughout the federal trademark registration process. Because the TEAS filing system utilizes electronic signatures, it is easy to minimize the weight of applicants’ statements to the USPTO during the prosecution of an application. Applicants should keep in mind that a signature or sworn statement provided electronically has the same effect as a “wet signature” on any hard-copy document. For instance, when filing the necessary documents to amend a date of first use, an applicant is declaring under penalty of perjury that the amended date is accurate to the best of the applicant’s knowledge. Knowingly or willfully making misstatements during the prosecution of a federal trademark application could result in a finding of fraud on the USPTO, which could support a third-party’s opposition to registration of a mark or a petition to cancel an existing registration.
TMEP Section 903.05 addresses how to account for earlier use of an applied-for mark by a predecessor or related company:
If the first use anywhere or the first use in commerce was by a predecessor in title to the applicant, or by a related company of the applicant (see 15 U.S.C. §§1055, 1127), and the use inures to the benefit of the applicant, the dates of first use may specify that the use on this date was by the applicant’s predecessor in title, or by a related company of the applicant, as the case may be. See 37 C.F.R. §2.38(a). It is generally not necessary to give the name of the predecessor in title or the related company.
Before claiming a date of first use based on prior use by another party, applicants must carefully evaluate whether that party qualifies as a “predecessor” or “related company.” As previously explained with respect to assigning intent-to-use applications, the criteria for determining whether companies are “related” is not particularly clear. When in doubt, applicants should confer with legal counsel regarding the relatedness of an entity prior to declaring a first use date based on earlier use by that company.
The specificity required when providing dates of first use is discussed in TMEP Section 903.06:
In specifying the dates of first use, the applicant should provide dates that are as definite as possible.
The only date that will be recognized for USPTO proceedings is the latest definite date specified by the applicant. However, the applicant may use indefinite terms in describing dates if the applicant considers it necessary due to uncertainty as to the particular date. Although terms such as “at least as early as,” “prior to,” “before,” “on or about,” and “in” are acceptable for the record, these terms are not printed in the Official Gazette or on the certificate of registration.
When a month and year are given without a specified day, the date presumed for purposes of examination is the last day of the month. When only a year is given, the date presumed for purposes of examination is the last day of the year.
Pursuant to these guidelines, applicants should state with particularity on which day of the month and year that the mark was first used. Failure to specify precise dates may result in erroneous listings in the federal record when the USPTO employs its default presumptions to resolve indefinite or nonconforming dates of first use.
To illustrate these presumptions, TMEP provides the following examples:
- “Prior to January 1, 1955” will be treated as December 31, 1954.
- “Before February 1961” will be treated as January 31, 1961.
- “On or about June 18, 1987” will be treated as June 18, 1987.
- “1990” will be treated as December 31, 1990.
- “In November 1991” will be treated as November 30, 1991.
- “In the 1920s” will be treated as December 31, 1929.
Although dates of first use claimed in an inter partes proceeding must be corroborated by sufficient evidence, the dates appearing in the federal record could influence a third-party’s decision to challenge an application or registration on priority grounds.
Referring specifically to use-based applications, TMEP 903.06(a) provides that a §1(a) applicant “must attest to dates of use in the application or allegation of use that are on or before the date the application or allegation of use was signed.” Essentially, an applicant for registration based on actual use may not allege use, or claim a date of first use, that has not yet occurred.
TMEP Section 903.07 applies exclusively to “composite marks”–namely, marks that are comprised of both a word or slogan and a design or logo. This rule explains that applicants seeking to register composite marks may can choose between identifying individual dates of first use for each of the mark’s “separable elements” or providing dates of first use only for the applied-for mark in its entirety.
In a similar vein, TMEP Section 903.08 sets out instructions for identifying dates of first use in the event that an applicant is seeking registration of a mark for more than one item in a given international class of goods or services. While the rules state that the date of first use anywhere and date of first use in commerce need not pertain to every item in the class, “[t]here must be at least one item in a class to which the specified dates pertain. See 37 C.F.R. §§2.34(a)(1)(v), 2.44(a)(4)(i)(B), 2.45(a)(4)(i)(D). Where the dates of use do not pertain to all items, the applicant should designate the particular item(s) to which they do pertain.” If an applicant only identifies one date of first use anywhere and one date of first use in commerce, the USPTO will presume that the dates apply to all goods or services in the relevant international class unless the applicant states otherwise.
First Use in Commerce Legal Considerations
Strict adherence to the USPTO’s guidelines regarding dates of first use is crucial, as that information has the potential to impact the outcome of any disputes regarding an applicant’s priority of use or even compromise the integrity of a registration. Accordingly, trademark applicants, tech startups, and entrepreneurs should exercise caution when claiming date of first use in commerce during the prosecution of a federal trademark application and consult an experienced trademark attorney as needed to ensure sufficient understanding of the relevant legal principles.