An applicant must establish use of the mark sought to be registered in order to obtain trademark registration with the U.S. Patent and Trademark Office ("PTO"). The applicant is required to specify the date the mark was first used anywhere as well as the date the mark was first used in commerce. This requirement applies to foreign applicants as well as domestic applicants.
First Use Anywhere
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. 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. The date of first use is important in establishing priority when enforcing trademark rights against infringers. Activities in preparation of making sales such as press releases and pre-sale advertising would qualify as first use.
First Use in Commerce
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 Congress, if such use is bona fide and in the ordinary course of trade. One isolated sale followed by a period of no sales (token use) may not be enough to establish "first use in commerce."
While mere promotion and advertising on a web page is not "use in commerce," a website page that displays the trademark, the product and a means to buy the product is considered to be "use in commerce." In other words, the website must display a telephone number for placing orders or a menu for online ordering and payment. Similarly, catalogs which provide ordering and payment information qualify as "use in commerce."
Trademark Applications
An applicant may apply to register on the principal register trademarks used in commerce (Lanham Act §1(a)) or trademarks intended for use in commerce (Lanham Act §1(b)). If the first use made by the applicant was in commerce that may be regulated by Congress, the date of first use and the date of first use in commerce will be the same date. The date of first use anywhere will always be either earlier than or the same as the date of first use in commerce. If the date of first use anywhere specified in an application or allegation of use is later than the date of first use in commerce, the PTO will require clarification. An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a). If the application does not include a date of first use and/or a date of first use in commerce, the PTO will require that the applicant state the date of first use and/or date of first use in commerce via an affidavit or declaration. Also, in a §1(a) application, the applicant may not 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 before the application filing date, the applicant may amend the basis to §1(b).
Written by John H. Choi. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.0816.