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trademark first use in commerce

Trademark’s First Use in Commerce

By John DiGiacomo

Registering a trademark may seem like a daunting task, but it isn’t. However, the confusion usually arises when you are trying to determine “first use”. The first time you used your trademark could, but is probably not, the correct date to use as the “first use in commerce” date in the trademark application. That is because the trademark’s first use was likely on your website or other material before an actual sale of goods or service rendered, and this date is not enough to establish “first use in commerce.”  

A trademark is a symbol, phrase, or word used to identify a specific business and distinguish that business’s products from those of other businesses. Trademark is about brand recognition. Trademarks make it easier for consumers to readily identify the source of a product (example: Nike’s “swoosh” sign). In some instances, trademark protection extends beyond a symbol, phrase, or word to include other features of a product, like its packaging or color. These features are considered “trade dress,” and may be protected if consumers identify them with a particular business rather than the product in general.

Trademarks, and the reputation these brands represent, influence consumers’ purchasing decisions. Put simply, a trademark is like a company’s brand name. It is important to understand the value of a trademark, how it can be used to grow your business, and how to protect that interest.

First Use in Commerce

The federal trademark application requires that you declare when you first used the mark in commerce for goods or services. The date of first use in commerce is the date when the goods were first sold or shipped, or the services were first rendered. The exclusive right to a trademark depend on the originality of the mark and the date of first use in commercial trade.

A trademark owner automatically has exclusive trademark rights in his original work from the moment he uses the original mark to identify his goods or services in the marketplace. The date of first use of a trademark establishes exclusive ownership rights prior to trademark registration. Trademark registration offers additional security against trademark infringement (learn more about protecting your trademark here). Further, it provides a public record of trademark use and informs the public of the designated use.

  • Use with goods.

In relation to goods, a trademark is used in commerce when it is placed in any manner on the goods, and the goods are sold or shipped in commerce. For example, if you sell electronics, it is not enough that the electronic good was advertised. It must also be sold and “transported in commerce.” Therefore, if you advertised a TV on your website on March 11 and then made a first sale on March 14 having the trademark to an out-of-state customer, then the first use date for the federal trademark application would be March 14.

  • Use with services.

For services, the trademark is used in commerce when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce. Trademark is also used in commerce when the services are rendered in more than one State or in the U.S. and a foreign country, and the person providing the service is engaged in commerce in connection with the service. Let’s say that you are an architect and you launched your website August 3. You signed a contract with an out-of-state client to provide your service on August 8 and delivered your designs to the client on August 14. The use of your trademark on August 3 is not sufficient because the service had not yet been rendered under the mark. It is likely that the service was rendered on August 14 because that is the day you delivered your work product.

Multiple Items in the Description

If there are multiple items listed in your description of goods or services in the same class, you should provide the date when all the goods or services listed in that class were sold or rendered. For example, let’s say that you sell furniture. On your application you declare the goods of chairs, tables, and footrests. You first sold a chair having the mark on January 2. You first sold a table on February 1. You first sold a footrest on April 11. Since you would list all of these items in the same class, the first use date for all of these good in this particular class would be the latest date of April 11. April 11 is the earliest date when on or before that date all of the listed goods in that class had been sold with the mark.

Trademark Attorney’s Role in Determining First Use

Declaring a first use date before the actual use can negatively impact your registration. The application states “at least as early as,” which means that you can always show an earlier date during a dispute if needed. If you are uncertain if the date qualifies as first use, a trademark attorney can help you make this determination. A trademark attorney can also help if another party challenges your trademark application or registration.

In cases involving trademark infringement, courts look to the date of first use of the original mark in the marketplace, in relation to the rightful owner’s specific goods and services. The original owner must prove an earlier date of first use to prevail. Federal registration of trademark provides a legal presumption of exclusive trademark rights.

In the meantime, save proof of the first use date. The United States Trademark and Patent Office (USTPO) does not require proof of the date when you first used the mark in commerce, but it does require proof of the mark in use. For example, the USPTO does not require that you submit an invoice showing the date of first sale, but you should keep a copy of such a document for your records. In some circumstances, providing an incorrect first use in commerce can result in your registration being cancelled or denied.

For more information about first use in commerce, contact Revision Legal’s team of experienced trademark attorneys through the form on this page or call 855-473-8474.

Image credit: Jesse Gardner.

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