Dates of Use

How to Satisfy a Requirement or Refusal Regarding Providing Dates of First Use in an Application Alleging Use in Commerce or an Allegation of Use
 

 

What Are Dates of First Use?

If you assert that your mark is in use in commerce, either in an original Trademark Act Section 1(a) application or in an “allegation of use” (an allegation of use refers to both an amendment to allege use (AAU) and a statement of use (SOU)), you must include both the following dates of first use for each specified international class:

(1) A Date of First Use Anywhere:  The date the mark was first used anywhere on or in connection with the goods and/or services in the application or allegation of use;

            AND

(2) A Date of First Use in Commerce:  The date the mark was first used in commerce on or in connection with the goods and/or services in the application or allegation of use. 

The USPTO refers to these dates as dates of use or dates of first use.  You must provide these two dates even if they are the same. 

The USPTO presumes, if more than one item of goods or services is listed in a particular class, that the dates of first use apply to all the listed goods or services in that class.  If the dates of first use do not pertain to all the listed items, you should designate the particular item(s) to which they do pertain. 

For more information about dates of first use, see 37 C.F.R. §§2.34(a)(1)(ii)-(iii), 2.71(c), 2.76(b)(iii), 2.88(b)(iii) and TMEP §§903 et seq., 1104.10(b)(iv), 1109.09(a).

What Is the Date of First Use Anywhere?

A date of first use anywhere is the date when (1) the goods were first sold or transported, or the services were first rendered, under the mark, and (2) such use was bona fide and in the ordinary course of trade.  The date the mark was first used “anywhere” means such use 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 anywhere will always be earlier than or the same as the date of first use in commerce. 

For more information about a date of first use anywhere, see TMEP §§903.01, 903.03, 1104.10(b)(iv), 1109.09(a).

What Is the Date of First Use in Commerce?

A date of first use in commerce is the date when (1) 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 (such as interstate commerce or commerce between the United States and a foreign country), and (2) such use was bona fide and in the ordinary course of trade.  

For more information about a date of first use in commerce, see TMEP §§903.02, 903.03, 1104.10(b)(iv), 1109.09(a).

Do Dates of First Use Have to Be Verified?

Generally, you will be required to verify your dates of first use with a supporting affidavit or declaration under 37 C.F.R. §2.20 when (1) you make changes to the dates of first use, or (2) you provide dates of first use after such dates were initially omitted in the application or allegation of use.  

For more information about verifying dates of first use, see TMEP §§903, 903.04, 1104.10(b)(iv), 1109.09(a).

What Is the Required Format for Dates of First Use?

Dates of first use must include a month, day, and year.  In addition, you should provide dates of first use that are as definite as possible.

If indefinite terms for describing the dates of first use are used, the USPTO will interpret them as follows for purposes of examination:

  • If a month and year are given without a specified day, the USPTO presumes the date is the last day of the month (e.g., “in November 1991” is treated as November 30, 1991). 
  • If a year is given without a specified month and day, the USPTO presumes the date is the last day of the year (e.g., “in the spring of 1990” is treated as December 31, 1990).

If modifiers like “prior to” or “before” appear in a date that includes the month, day, and year, the USPTO will presume the date is the day immediately prior to the specified date (e.g., “prior to January 1, 1990” is treated as December 31, 1989). 

For more information about how the USPTO interprets indefinite dates of first use, see TMEP §903.06.

What if Your Date(s) of First Use Appear to Be Date(s) that Are After the Date You Filed an Application or AAU or the Time Allowed for Filing an SOU?

If the date(s) of first use of your mark are later than the date you filed an application or AAU or SOU, the USPTO will require that you clarify the date(s) of first use because you cannot attest to use that has not yet occurred. 

If the date(s) of first use of your mark are later than the time allowed for filing an SOU, the USPTO will issue a refusal because you have not shown use of the mark in commerce before the expiration of the statutory period for filing the SOU.

  • If you had used the mark in commerce on or before the application or AAU filing date or the time allowed for filing an SOU, you may respond to the Office action by amending the date(s) of first use to specify the correct date(s) or by resubmitting the correct date(s), verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
  • If you had not used the mark in commerce on or before the application or AAU filing date, you may respond to the Office action by requesting to amend your filing basis to intent to use under Section 1(b), because a Section 1(b) filing basis does not require dates of first use.  If you have filed an AAU, you may withdraw the AAU; the AAU fee will not be refunded.  However, if you have filed an SOU after a notice of allowance issued, you may not amend to an intent-to-use basis; an SOU may not be withdrawn.  In such case, your application will be abandoned.

Note:  If you amend to an intent-to-use basis or withdraw the AAU, registration will not be granted until you amend the application back to use in commerce under Section 1(a) by filing an acceptable allegation of use (another AAU or an SOU) with proper dates of use, among other things, and the required fee.

For more information on amending date(s) of first use or the filing basis to Section 1(b), or withdrawing the AAU, see TMEP §§806.03(c), 903.04, 1104.10(b)(iv), 1104.11, 1109.09(a).

How Do I Add or Modify Verified Date(s) of First Use, Amend a Filing Basis, or Withdraw an AAU?

Below are instructions for how to use the Trademark Electronic Application System (TEAS) to respond to the dates-of-use issue in an Office action.  The instructions below presume that you will be using a TEAS form to respond online to more than one issue.  To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it.  For more information about who may sign a response, please review your Office action.

To respond to this issue in a nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form.  To respond to this issue in a final Office action, use the TEAS "Request for Reconsideration after Final Action" online form.  These forms will include the appropriate required statements and supporting declaration language referenced in the Office action.  The instructions provided in both forms are the same.  If you need technical assistance with TEAS, contact TEAS@uspto.gov.

TEAS Online Form Instructions:

To add or modify verified date(s) of first use for an existing class or classes:  (1) Answer "Yes" to form wizard question #2 for adding or modifying dates of use; continuing on to the next portion of the form, for each relevant class, (2) under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”; (3) in the "Date of First Use of Mark Anywhere" field appearing underneath the "Filing Basis Section 1(a)" section, enter the first date the mark was used anywhere, using the format MM/DD/YYYY; (4) in the "Date of First Use of Mark Commerce" field, enter the first date the mark was used in commerce, using the format MM/DD/YYYY. The date of first use anywhere must be the same as or earlier than the date of first use in commerce.; and (5) once all relevant classes have been addressed, click the “Continue” button.

WARNING: The TEAS online form requires two signatures for submitting dates of use - one in the “Declaration Signature” section and one in the “Response Signature” section.  The same individual may not always have the authority to sign in both places. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the amendment being unverified and unacceptable.

To amend to Section 1(b):  (1) Answer "Yes" to form wizard question #2 for changing filing basis; and then, continuing on to the next portion of the form, for each relevant class for which the basis is being amended, (2) under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored."; (3) under "Filing Basis Section 1(a)," uncheck the box for "Filing Basis Section 1(a)"and delete any information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce text boxes; (4) check the box next to "Filing Basis Section 1(b);" and (5) once all relevant classes have been addressed, click the “Continue” button.

WARNING: The TEAS online form requires two signatures for amending to Section 1(b) - one in the “Declaration Signature” section and one in the “Response Signature” section.  The same individual may not always have the authority to sign in both places. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the amendment being unverified and unacceptable.

To withdraw an AAU:  (1) Answer "Yes" to form wizard question #3 for a miscellaneous statement.  Continuing on to the next page of the form, in the "Additional Statement(s)" section, (2) check the box for "Miscellaneous Statement," and enter in the text field for the "Miscellaneous Statement" that "Applicant withdraws the amendment to allege use."  And (3) click the “Continue” button.