TRADEMARK FILING DATES. DETAILS COUNT.
The United States Patent and Trademark Office (USPTO) is truly a stickler for timing and the entire enterprise of protecting and enforcing one’s trademark rights revolves around proper filing and response dates. Remember, one of the USPTO’s key concerns is that a Trademark Applicant has not only developed a sufficiently distinct trademark but also that the trademark has actually been used in commerce. Indeed, without the Use component, there is no “trademark” – only a catchy name or logo.
TRADEMARK DATES REALLY DO MATTER
Mis-identifying the correct date a trademark was First Used can have consequences that far exceed whether the trademark application is granted or not and is unfortunately often most relevant in a defensive posture where a trademark holder is forced to prove to an aggressive opposer that the mark was in fact in Use at the time of the Trademark Applicantion’s designated date.
To this end, the USPTO’s trademark application calls upon the applicant to designate two dates of importance; The “Date of First Use Anywhere” and the “Date of First Use in Commerce”. The essential difference between these two dates is both subtle and important.
DIFFERENCE BETWEEN USE ANYWHERE AND USE IN COMMERCE IN TRADEMARK APPLICATIONS
As this alluded to earlier, it is critical for a trademark applicant to understand the nuances involved in the “Use in Commerce” requirement for his/her alleged goods/services. Indeed, the definition of ordinary use in commerce will vary from industry to industry. Perhaps Bona Fide sales in a given widget business demands the sale of 1000 products while in another business, ten sales would in fact serve as a meaningful sale. To this end, third party trademark opposers may allege the trademark holder has not made proper use of the trademark in commerce, vis-à-vis their particular industry, as a basis to invalidate the trademark.
The essential difference between “Use Anywhere” and “Use in Commerce” is the location of the mark’s use; If the trademark was only used in conjunction with the sale of goods/services within a State, it has not been “Used in Commerce” and instead only been in “Use Anywhere”. As articulated by the Trademark Manual of Examining procedure,
“In a trademark or service mark application, the date of first use anywhere is the date when the goods were first sold or transported, or the services were first rendered, under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of “use” within the definition of “abandonment of mark”). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, 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.” TMEP 93.01
Conversely, the date the mark was first “Used in Commerce” is the date in which the mark was used in conjunction with goods/services that were sold in interstate commerce, or between States. As articulated by the Trademark Manual of Examining procedure,
“In a trademark or service mark application, the date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade.”
CONSEQUENCES OF WRONGFUL DATE DESIGNATIONS
Many people confuse “use in commerce” with “use anywhere,” when completing their trademark applications, and this error can result in a denial from the USPTO. If the USPTO grants the trademark and the registration is challenged, an incorrect date of use in commerce grants the court the right to declare the trademark void ab initio under the Trademark Act Section 1(a).
Being declared void ab initio means that in the event the trademark application was filed under Section 1(a), based on use in commerce, and the mark was not actually in use in commerce, the trademark application is “void from the beginning” and will therefore not be protected by the Trademark Act. The trademark registration can also be declared ab initio under Section 1(b) of the Trademark Act if the applicant lacks the bona fide intent to use the trademark in commerce for all the goods and services identified in the trademark application. When a trademark is challenged under Section 1(b), the trademark owner cannot rely on even a verified statement of intent to use the mark in commerce. The trademark owner must provide some demonstrable, objective proof of the date the trademark was intended to be used in commerce. Please note, for International trademarks filed under the Madrid Protocol, the dates in the foreign application must match the USPTO trademark application.
HOW AN APPLICANT CAN IDENTIFY THE DATE OF FIRST LAWFUL USE IN COMMERCE
Sometimes it is difficult to ascertain the precise moment a product or service was used in commerce – especially if the trademarked goods or services were in development for a long period of time. A trademark application can designate the month and year if the specific date of the month is unknown. In this scenario, the USPTO considers the first date of use as the last day of the month. For instance, listing December 2019 as the date of first use would cause the USPTO to record the date of first use as December 31, 2019.
Meeting the burden of proof of lawful use can be challenging in highly regulated segments of the economy. Pharmaceuticals, for example, may be subject to rules promulgated by the Food and Drug Administration (FDA) and other government agencies depending on the nature of the drug and the consumers likely to use them. Obtaining FDA approval to sell the product may not satisfy all the requirements to sell the product legally throughout the country – even though the product itself is legal. Similarly, Cannabis and CBD trademarks notoriously have issues with this requirement due to Cannabis’s designation as a Schedule 1 Controlled Substance.
TRADEMARK DATES; DIGGING DEEP
Notably, the Date of First Use may, circumstances depending, be a predecessor in title or a company related to the applicant in some capacity. As another point of interest, it’s not too uncommon for a trademark applicant to list multiple classes with varied goods/services ina single application. The astute reader must surely wonder, if the goods/services were not first used on the same date, which date should be listed in the trademark application? Section 903.08 of the Trademark Manual of Examining Procedures (TEMP) specifically asserts that the earliest use date for at least one item in the class. When the dates differ, the applicant must specify which goods or services are associated with the earliest date listed for its class within the trademark application.
The applicant failing to record specific dates of first use associated with trademark use with specific goods and services will result in the USPTO’s assumption that the earliest date listed applies to all the goods and services listed in that class of the trademark application. The miscellaneous section of the trademark application can be used to instruct the USPTO of the differing dates for goods and services in the same class. To avoid the application becoming void ab initio, it is imperative to have every item’s date of first use recorded accurately in accordance with the legal definition of commerce.