The alleged date of use in a trademark application is one of the most critical pieces of information submitted to the United States Patent & Trademark Office ("USPTO") when filing an application. It is imperative that a trademark applicant thoroughly understands the legal definition of "use in commerce". See our webpage entitled, For The Purposes Of Trademark Law, What Is Use In Commerce, for a detailed discussion on this topic.
The differences between "use anywhere" and "use in commerce" must be understood prior to filing the trademark application. This is vitally important so the application cannot be challenged for being void ab initio (from the beginning). A trademark registration may be found void ab initio under the Trademark Act Section 1(a) when the mark in a use-based application was not in commerce as of the application filing date. See MeUndies, Inc. v. Drew Massey d/b/a myundies Inc., Cancellation No. 92055585 (August 13, 2014). Moreover, a similar result can be found in an application filed under Section 1(b) of the Trademark Act, if an applicant lacks the requisite bona fide intent to use the mark in commerce on all the goods or services identified, when he files the application. See, The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010). Regarding evidence of a bona fide intent to use the mark in commerce, there must be objective evidence of intent, not a mere statement of subjective intention. If an opposer can show there is no documentary evidence of intent, this satisfies the burden of establishing a prima facie case of lack of bona fide intent to use. Then, Applicant must come forward and produce evidence of its bona fide intent to use the trademark, as of the filing date.
When recording dates of first use, the Applicant can indicate a month, day and year if known. If it is difficult to determine the specific day of a month, the Applicant can simply assert a month and year. The USPTO will assume it is the last day of the particular month, if no day is indicated. Regarding the definitions for use, "use anywhere" means the date goods were first sold or transported or services were first rendered and advertised under the mark anywhere in the U.S. or elsewhere, intrastate or interstate or of another nature. However, the use must be "lawful" use to give rise to trademark priority rights.
The second type of use requiring the Applicant to indicate a "first use date" is "use in commerce". "Commerce" must be a type of commerce that can be lawfully regulated by U.S. Congress. This could be interstate commerce, territorial commerce or commerce between U.S. and a foreign country. This use can include use by a predecessor in title to the applicant or by a "related company" to the Applicant. See our webpage entitled, Trademark Use By Trademark Applicant's Related Company, for more details on this topic and to understand the meaning of a "related company" under trademark law.
Another important issue when filing a trademark application is what if more than one item of goods or services in a particular class has different use dates. The Trademark Manual of Examining Procedure ("TMEP") Section 903.08 addresses this matter. When providing the use dates in either an application or statement of use, the earliest use date for at least one item in a class should be indicated. If the dates of use do not pertain to all items in a class, the applicant should designate the particular items to which the dates do pertain.
The USPTO will assume the dates of use apply to all the goods or services, unless the Applicant states otherwise in the application or statement of use. The Applicant can utilize the miscellaneous section of the application or Statement of Use to indicate additional dates of use for certain goods or services. Where more than one date of use is specified for a particular class, the earliest date will be printed on the Certificate of Registration. Careful consideration should be given before submitting the dates of use in a trademark application or a statement of use. If you have questions regarding dates of use for your trademark or other trademark related questions, please contact our office for a courtesy consultation.