Filing a Trademark Application | Trademark First Use vs. First Use in Commerce

Are you determined to understand trademark first use vs. first use in commerce? The difference isn’t really all that complicated at all! Although, you’ll want to know that the United States Patent and Trademark Office (USPTO) makes a distinction between the two. So that your trademark application won’t be denied. 

Per the USPTO, the date of first use anywhere refers to the date when goods or services were initially sold under a specific trademark either in the US or another country. While first use in commerce is the date when goods or services were sold using the mark in actual commerce between states or the US and another country.

Why is the date of first use such an important piece of information? When registering your trademark, the USPTO requires that you identify the date of first use anywhere and use in commerce. These dates prove that your trademark truly exists. If the mark is not actively in use, then the trademark doesn’t truly exist. The dates of first use establish to the USPTO the use of the mark as it’s intended.

What Does Date of First Use Mean for Trademark Applicants?

Let’s more thoroughly flesh out what the date of first use anywhere means for trademark applicants. The date of first use anywhere is when your products were first sold or transported. Additionally, this date may be defined as the date on which you completed your terms of service under the service mark. It’s a date that pertains to domestic and international applicants, wherever the mark was first used. So it could be national, local, within or between states, and/or any other manner. 

Similarly, to identify the date of first use in commerce, you’ll determine the first date of sale or transportation. Or, the completion of terms of service. But the mark’s usage has to be “bona fide” and in a way that’s regulated by the US Congress. Commerce regulated by Congress means the trademark was used to transport or sell merchandise, or the provision of services, to customers who live out of state. The federal trademark law in the US declares that use in commerce must be shown as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” You have to provide evidence of authentic and genuine usage of the mark. 

If it so happens that your product or service was first sold in a form of trade that’s regulated by Congress, then the date of first use anywhere and first use in commerce will actually be the same date. 

How to Prove Bona Fide Use of a Mark? Trademark First Use vs. First Use in Commerce

How do you prove you’ve truthfully used your mark on the date of first use in commerce? That depends on whether you’re offering products or services! So, for goods, you need to show that the mark is displayed on those goods, on the packaging, or on displays. And, you have to show that the goods were legitimately sold or transported. Regarding services, applicants have to demonstrate that the mark was used to promote or sell their services. And that the services were provided in a commercial context. 

The USPTO further requires that trademark owners prove that they’ve made meaningful sales of their goods or services. There isn’t necessarily a quantity quota that you need to meet. However, you have to show that actual sales were made to prove bona fide use in commerce. For example, the USPTO might consider the sale of goods to friends and family, or the provision of services for free, as sham sales. The requirement of meaningful sales could also be called into question if the transactions are not consistent. Why? Because that may indicate the mark hasn’t been used in the ordinary course of trade. 

Maintain Proper Documentation to Prove Your Date of First Use in Commerce

For sure, when establishing your date of first use in commerce, you can present documentation of a small amount of sales and/or free offerings via promotion if that usage was authentic. Definitely have the proper documentation! The USPTO may wish to see proof of your marketing efforts and so forth, within your industry, that relate to the bona fide use of the mark in commerce. 

The difference between the date of first use in commerce and first use anywhere isn’t trivial! You’ll want to distinguish these dates very clearly. Even if they’re the same. That way you can avoid having the USPTO deny your trademark application. If the incorrect date of use is recorded, the mark’s registration could be challenged. Can the date of first use be difficult to determine? Possibly! Especially if the development of the products or services occurred across a span of time, rather than just on one single day.

In instances where the date of first use is unknown, you may submit the month and year in your trademark application. The USPTO will then assume the final date of the month is your date of first use. And, when applicants only know the year of first use, without a month or day, the USPTO will select the last day of December as the date. 

Avoid Getting Your TM Application Denied

Again, you have to demonstrate that you’ve had bona fide sales in order to achieve trademark protection! What if you’ve only shipped products to your friends or family? Sold a few items below market value for promotional reasons? Shipped goods only one time? Or had inconsistent shipments of products that are typically sold in large quantities? This could lead the USPTO to question the legitimacy of your use in commerce date. 

Both the date of first use anywhere and date of first use in commerce have to be submitted to the USPTO. And if a change to those dates has to be made after the submission of your trademark application? You are entitled to file an amendment. That amendment, however, will need to be supported with a declaration or affidavit. And, if the first use date happens to be later than the date when you signed the application, but prior to it being filed, you are permitted to provide clarification of the date of first use (because you can’t declare use in the future). 

Retain Legal Counsel to Ensure USPTO Approval | Trademark First Use vs. First Use in Commerce

When seeking trademark protection and registration, you’ll want to adhere to the rules, regulations, and laws so that you get a USPTO approval!

To ensure you’re applying for trademark registration properly, you can rely on our incredible team. Have questions? Contact us at Stockman & Poropat, PLLC today for a free consultation!