Trademark: Date of First Use
Date of first use is a very important concept in US trademark law. A trademark application can be filed under 15 USC § 1051 (a), which is an application filed based on actual use in the stream of commerce (referred to as a section 1(a) filing) or under 15 USC § 1051(b), which is an application filed based on future intent to use the mark in the stream of commerce (referred to as a section 1(b) filing).
In either case, for the USPTO to register (and recognize) one’s trademark proof of actual use must be shown. Thus, while one may file a trademark as a section 1(b) filing to get the process started, the USPTO will only register the mark after a statement of use is filed.
The advantage of a section 1(b) filing
Since proof of actual use must be shown to register a trademark, you may wonder why even bother with a section 1(b) filing? To answer this question consider the following hypothetical situation:
On January 1, Company B files a section 1(b) trademark application to register a mark, SHIRTZ, for t-shirts it intends to sell. Since it is a 1(b) application, Company B has made a bona fide claim that it intends to use the mark in the stream of commerce. A week after Company B’s filing, on January 7, Company A files a section 1(a) application to register the mark SHIRTZ with proof of actual use (and sale) of the mark on t-shirts.
Who has the right to use the mark?
Generally, the first filed application will be examined first. The USPTO will suspend the latter-filed application until the first application is examined. If the first application is granted, the second application will be rejected. If the first application is rejected, the second will be removed from suspension and then examined. However, there is an exception to the rule: First to use wins over first to file (with an exception to the exception-but that scenario addressed later).
In our hypothetical, if Company A has been selling t-shirts with the mark SHIRTZ prior to B’s filing (that is, prior to January 1), Company A can show prior use over company B.
So does company A get to use the mark?
To make a determination if Company A has the rights to use the mark, the USPTO may look at additional factors to determine the strength (or dilution) of Company A’s mark. This includes considering other factors such as how widely, in the US, Company A had distributed the SHIRTZ t-shirts, how strong were past sales, etc.
Another factor would be whether Company A filed an “opposition” at the USPTO as soon as Company B’s application was allowed, or whether Company B was too late but instead started a “cancellation” proceeding at the PTO.
These factors are used to determine a likelihood of confusion of associating Company A’s product with that of Company B by consumers. If it is determined that Company A has superior rights, it wins the rights to use the mark.
Now would be a good time to address the exception to the exception (mentioned above). Namely, when first to use does not win over first to file.
If Company A’s date of actual use was after Company B’s 1(b) filing, Company B’s date of actual use can assume the date of filing even if actual use occurred at a later date. Thus, Company B by filing a 1(b) application may win the right to use the mark, even if Company A used the mark before Company B.
Huh!? What does this mean?
Back to our hypothetical, let’s presume Company A is able to show evidence of actual use as of the date of its filing, January 7. Further, let’s assume Company B started actual use of the mark SHIRTZ on its t-shirts June 1.
Here, even if company A started use of the mark prior to actual use by Company B, the date of use of Company B will be assumed as the date of filing of the 1(b) application (January 1). However, since A’s actual use of January 7 was after B’s January 1st 1(b) filing, Company B will be granted the right to use the mark. Company A losses the right to use the mark because Company B filed the application expressing intent to use the mark prior to Company A’s actual use.
Date of first use is a very important concept in US trademark law. However, a section 1(b) filing is a powerful mechanism to register a trademark for which an applicant has a bona fide intent of using the mark in the stream of commerce.
Originally published at https://www.clfip.com on September 7, 2019.