What Constitutes a Trademark First Use In Commerce?

January 12th, 2012

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm representing trademark owners throughout the United States.

Today, I will be answering a common question.  And that question is: “What constitutes a trademark’s first use in commerce?  And the reason that question comes up fairly often is because when filing for a trademark application with the United States Patent and Trademark Office, the applicant must provide two dates.  The first is known as the first use in commerce date, and the second is known as the first use date.  The first use date is exactly as it sounds.  It’s the first date that you actually made use of the particular mark in connection with the goods or services for which you’re applying.  However, the first use in commerce date has a bit more legal meaning.

The first use in commerce date means a bona fide sale or transportation in commerce which may lawfully be regulated by Congress.  If we break that down into the two important elements, it means that, first, it must be a bona fide sale or transportation for the first use to qualify.  And bona fide means something more than merely a token use.  It’s actually use of the mark in connection with the goods or services for the purpose of making a sale, be it advertising, marketing, whatever it might be.  And then the second element, if it was in fact bona fide, was it followed by activities providing a continuous effort or intent to use the mark.  So, you can’t simply make one sale and then abandon use of the mark moving forward, yet, try and claim rights in it.  You have to continue to have the effort made and intent to use the mark moving forward.

While the federal court has held that a mark placed on goods and a single sale or shipment may be sufficient to support an application to register the mark, that shipment must also be accompanied by or followed by activities which indicate a continuing effort or intent to use beyond that initial sale.  So, the first use in commerce date is really the first date that you placed your mark on your goods or you made sales in advertising and marketing in connection with your particular services.

So, keep in mind, it cannot be a token use merely for the purposes of establishing trademark rights.  It has to be a bona fide use that allows not only you to claim ownership, but also allows the USPTO to deem that the use that you provide is sufficient to qualify.

In the service mark context, you need to keep in mind that a service mark is different than a trademark.  While a trademark pertains to goods, a service mark pertains to services.  So, a legally significant use giving rise to rights in a mark for goods can be from placing the mark in some manner on the goods, either directly on it or in connection with packaging, hang tags, labels, whatever it might be.  However, in the connection with service marks, it means use in conjunction with the offering and providing of the service.   And what this means, practically speaking, is that the use of the mark is made in connection with the sale or advertising materials for the particular service that you’re claiming.  So, if you’re selling something online and, therefore, involved in the retail services area, you need to be able to show that you have made sales or advertising of the mark in connection with those retail services.

Ultimately, a trademark attorney can assist you in determining what the actual first use in  commerce date is.  However, in the event that you’re trying to make that determination on your own, keep in mind, again, the two requirements.  One, it must be a bona fide intent to use the mark, and it must be followed by continuous effort or intent to use the mark beyond what you’re saying is that original bona fide intent and the first use date.

Once again, this has been Brian Hall answering the common question: “What constitutes a trademark’s first sue in commerce date?

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

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3 Responses to “What Constitutes a Trademark First Use In Commerce?”

  1. we get a lot of questions as intellectual property attorneys about trademark 1st use issues one of the most important concepts under trademark registration law is the concept of 1st use. While you may file to register your trademark name in 2012, it is your 1st use date that will control, extend or limit your priority rights over another party. Even if you filed for trademark registration before someone else, that 3rd person can attack your trademark registration if they can show that they used the same or similarly confusing trademark before your 1st use date.

    Trademark 1st use in commerce requires that you or your small company use the Mark in commerce to identify your goods and services. Typically, this involves providing documented evidence that you used the mark to be registered to advertise or market your goods and services. If someone should attacking your trademark registration or date of 1st use in commerce, you will need to be able to prove that the 1st use date you provided to the trademark office is part of your trademark registration is accurate. Time stamped materials are preferred evidence to establish 1st use date.

    Contact the trademark registration attorney who can help you understand how to register your name as a trademark and learn more about the importance of first use dates in the trademark registration process.

  2. E Commerce law and trademark law sometimes overlap. On the internet, web sites and web pages sometimes create first use in commerce.

  3. I always prefer cyber law attorney over e-commerce lawyer. It seems like more people use the phrase cyber law then e-commerce. It sounds cooler too.

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