Any change to the dates of use must be supported by an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). The affidavit or declaration must be signed by someone properly authorized to sign on behalf of the applicant under 37 C.F.R. §2.193(e)(1). See TMEP §611.03(a). In addition, because a §1(a)-based application must properly allege current use of the mark, an applicant must attest to dates of use that are on or before the date such application was signed; an applicant may not allege use that has not yet occurred. See 37 C.F.R. §2.33(b)(1). Likewise, the dates of use specified in an allegation of use under §1(c) or §1(d) must be on or before the date the allegation of use was signed. See 37 C.F.R. §§2.76(b)(1)(ii), 2.88(b)(1)(ii); see also TMEP §903.06(a) (noting that, when a date of first use would be interpreted under TMEP §903.06 as later than the date on which the application or allegation of use was signed, the USPTO will presume that the date of first use is the date on which applicant signed the application or allegation of use).
In an application under §1(a), the applicant may amend the dates of use to adopt a date of use that is earlier than the date originally stated or later than the date originally stated, but on or before the application filing date. The applicant may not amend to specify a date of use that is later than the filing date of the application. 37 C.F.R. §2.71(c)(1). If an applicant who filed under §1(a) did not use the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
Example 1: Section 1(a) application filing date: March 9, 2015
First use anywhere: March 6, 2015
First use in commerce: March 6, 2015
Signature date: March 5, 2015
This sequence requires amendment because although the specified dates of use in this example are prior to the filing date, they are after the signature date.
If the specified dates of use in this example are correct, the applicant must resubmit the alleged use dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect, but the correct dates of use are on or before the application filing date, the applicant must provide the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect and the mark was not in use in commerce on or before the application filing date, the applicant may amend the filing basis to §1(b), if the applicant can satisfy the requirements for the new basis. If the filing basis is amended to §1(b), a registration may not issue until the applicant files an allegation of use. TMEP §1103.
If the signature date is incorrect in this example and the application was signed on or after the dates of use, the applicant may resolve the discrepancy by specifying the correct signature date.
Example 2: Section 1(a) application filing date: March 9, 2015
First use anywhere: March 12, 2015
First use in commerce: March 12, 2015
Signature date: March 9, 2015
This sequence requires amendment because the specified dates of use in this example are after both the filing date and the signature date.
If the mark in this example was in use in commerce on or before the application filing date, the applicant must amend the dates of use to specify the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the mark in this example was not in use in commerce on or before the application filing date, the applicant may amend the filing basis to "intent to use" under §1(b), if the applicant can satisfy the requirements for the new basis. If the filing basis is amended to §1(b), a registration may not issue until the applicant files an allegation of use. TMEP §1103.
In an application under §1(b), after the applicant files an amendment to allege use, the applicant may not subsequently amend the dates of use to recite dates of use that are later than the filing of the amendment to allege use. If a §1(b) applicant did not use the mark in commerce before the filing date of the amendment to allege use, the applicant may withdraw the amendment to allege use before the application is approved for publication. 37 C.F.R. §2.76(f); see TMEP §§1104.10(b)(iv), 1104.11.
Example 1: Amendment to allege use filed on March 9, 2015
First use anywhere: March 6, 2015
First use in commerce: March 6, 2015
Signature date: March 5, 2015
The sequence requires amendment because although the specified dates of use in this example are prior to the date on which the amendment to allege use was filed, they are after the signature date.
If the specified dates of use in this example are correct, the applicant must resubmit the alleged use dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect, but the correct dates of use are on or before the dates on which the amendment to allege use was filed, the applicant must provide the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect and the mark was not in use in commerce on or before the date on which the amendment to allege use was filed, the applicant may request to withdraw the amendment to allege use. If the amendment to allege use is withdrawn, registration may not be granted until the applicant subsequently files an acceptable allegation of use. TMEP §1103.
If the date of the signature in this example is incorrect and the amendment to allege use was signed on or after the dates of use, the applicant may resolve the discrepancy by specifying the correct signature date.
Example 2: Amendment to allege use filed on March 9, 2015
First use anywhere: March 12, 2015
First use in commerce: March 12, 2015
Signature date: March 9, 2015
This sequence requires amendment because the specified dates of use in this example are after the dates on which the amendment to allege use was signed and filed.
If the mark in this example was in use in commerce on or before the date on which the amendment to allege use was filed, applicant must amend the dates of use to specify the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the mark in this example was not in use in commerce on or before the date on which the amendment to allege use was filed, the applicant may request to withdraw the amendment to allege use. If the amendment to allege use is withdrawn, registration may not be granted until the applicant subsequently files an acceptable allegation of use. TMEP §1103.
In an application under §1(b), after the applicant files a statement of use, the applicant may not amend the dates of use to dates that are later than the expiration of the statutory deadline for filing a statement of use (i.e., the amended dates must be within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.71(c)(2). If the mark in a §1(b) application was not in use in commerce before the expiration of the deadline for filing a statement of use, the application will be abandoned; the applicant may not withdraw the statement of use or otherwise amend the application back to intent to use under §1(b). 37 C.F.R. §2.88(f), (k); TMEP §1109.17.
Example 1: Statement of use filed on March 9, 2015
First use anywhere: March 6, 2015
First use in commerce: March 6, 2015
Signature date: March 5, 2015
Statutory deadline for filing statement of use: May 15, 2015
This sequence requires amendment because although the specified dates of use in this example are prior to the date on which the statement use was filed and prior to the statutory deadline for filing a statement of use, they are after the signature date.
If the specified dates of use in this example are correct, the applicant must resubmit the alleged use dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect, but the correct dates of use are prior to the expiration of the deadline for filing a statement of use, the applicant must provide the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect and the mark was not in use in commerce before the expiration of the time allowed for filing a statement of use, the application will be abandoned. The applicant may not withdraw the statement of use or amend the application back to intent to use under §1(b) (i.e., based on a bona fide intent to use the mark).
Example 2: Statement of use filed on March 9, 2015
First use anywhere: March 12, 2015
First use in commerce: March 12, 2015
Signature date: March 9, 2015
Statutory deadline for filing statement of use: May 15, 2015
This sequence requires amendment because although the specified dates of use in this example are prior to the statutory deadline for filing a statement of use, they are after the date on which the statement of use was signed and filed.
If the specified dates of use in this example are correct, the applicant must resubmit the alleged use dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect, but the correct dates of use are prior to the expiration of the deadline for filing a statement of use, the applicant must provide the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the specified dates of use in this example are incorrect and the mark was not in use in commerce before the expiration of the time allowed for filing a statement of use, the application will be abandoned. The applicant may not withdraw the statement of use or amend the application back to intent to use under §1(b) (i.e., based on a bona fide intent to use the mark).
Example 3: Statement of use filed on March 9, 2015
First use anywhere: March 12, 2015
First use in commerce: March 12, 2015
Signature date: March 9, 2015
Statutory deadline for filing statement of use: March 10, 2015
This sequence requires amendment because the specified dates of use are after the date on which the statement of use was signed and filed, and after the statutory deadline for filing a statement of use.
If the specified dates of use in this example are incorrect and the mark was in use in commerce before the expiration of the time allowed for filing a statement of use, the applicant must amend the dates of use to specify the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the mark in this example was not in use in commerce before the expiration of the time allowed for filing a statement of use, the application will be abandoned. The applicant may not withdraw the statement of use or amend the application back to intent to use under §1(b) (i.e., based on a bona fide intent to use the mark).
A §1(a) multiple-class application must include dates of use for each class. See 37 C.F.R. §2.86(a)(3), (b)(3); TMEP §1403.01. If a single-class application containing dates of use is amended to a multiple-class application, the dates-of-use clause must be amended to reflect dates of use for each class. See 37 C.F.R. §2.86(a)(3), (b)(3); TMEP §1403.01. If a single-class application is amended to a multiple-class application, but the applicant does not set forth dates of use for the added classes, the examining attorney must inquire as to whether the dates of use apply to all classes and require an amendment, if appropriate. A supporting affidavit or declaration is not necessary if the dates of use in the original application or in an earlier-filed allegation of use apply to all classes.
A supporting affidavit or declaration is required for any change to the dates of use. 37 C.F.R. §2.71(c). However, if the applicant has properly verified the date of first use in commerce and, for whatever reason, seeks to amend the date of first use anywhere to the same date as the date of first use in commerce, a verified statement is not required if the originally specified date of first use anywhere is earlier than the date of first use in commerce. This is not considered a change to the dates of use, because the applicant has already sworn to a date of first use in commerce that necessarily requires, and logically includes, use of the mark "anywhere." Thus, the applicant has, in fact, already verified in its original application or allegation of use that the date of first use of the mark anywhere is at least as early as the date of first use of the mark in commerce. Such an amendment may be entered by examiner’s amendment.
When the date of first use anywhere is later than the date of first use in commerce, an unverified amendment is inappropriate because the validity of the verification is called into question by the impossibility of first use anywhere being later than the first use in commerce.
Example 1: First use anywhere: March 6, 1985
First use in commerce: February 10, 1985
An amendment of the date of first use anywhere to February 10, 1985, must be verified, because the validity of the date of first use in commerce is called into question by the fact that the applicant has specified a later date of first use anywhere.
Example 2: First use anywhere: March 6, 1985
First use in commerce: April 10, 1985
An unverified amendment of the date of first use anywhere to April 10, 1985, is acceptable, because first use in commerce logically includes use anywhere.
Example 3: First use anywhere: March 1985
First use in commerce: March 10, 1985
An unverified amendment of the date of first use anywhere to March 10, 1985, is acceptable because the information in the record is not contradictory on its face. There is only an apparent contradiction resulting from the way in which the USPTO construes the information when an applicant provides only the month and year (i.e., as indicating the last day of the month - see TMEP §903.06 regarding indefinite dates of use).
This policy is not applicable to the converse. That is, an amendment to the date of first use in commerce to conform to the date of first use anywhere is a change (because first use anywhere does not necessarily include first use in commerce) and must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.
If the first use anywhere or the first use in commerce was by a predecessor in title to the applicant, or by a related company of the applicant (see 15 U.S.C. §§1055, 1127 ), and the use inures to the benefit of the applicant, the dates of first use may specify that the use on this date was by the applicant’s predecessor in title, or by a related company of the applicant, as the case may be. See 37 C.F.R. §2.38(a). It is generally not necessary to give the name of the predecessor in title or the related company.
See TMEP §§1201.03–1201.03(e) regarding current use by a party other than the applicant.
In specifying the dates of first use, the applicant should provide dates that are as definite as possible.
The only date that will be recognized for USPTO proceedings is the latest definite date specified by the applicant. However, the applicant may use indefinite terms in describing dates if the applicant considers it necessary due to uncertainty as to the particular date. Although terms such as "at least as early as," "prior to," "before," "on or about," and "in" are acceptable for the record, these terms are not printed in the Official Gazette or on the certificate of registration.
When a month and year are given without a specified day, the date presumed for purposes of examination is the last day of the month. When only a year is given, the date presumed for purposes of examination is the last day of the year. Some examples are as follows:
When an applicant alleges only a year prefaced by vague or ambiguous language such as "in the Spring of," the USPTO will construe the date as the last day of that year, unless the applicant amends to specify a particular date or a particular month of the specified year.
When an applicant’s date of first use in commerce is more specific than its date of first use anywhere, the above presumption can result in an unacceptable dates of use clause in which the date of first use in commerce precedes the date of first use anywhere. For example:
First use anywhere: 1991
First use in commerce: January 15, 1991
Usual presumption of first use anywhere: December 31, 1991 (which results in a logical inconsistency).
Therefore, when the above presumption would be applicable, and the result is a date of first use in commerce that precedes the date of first use anywhere, the examining attorney must contact the applicant by telephone or email, if appropriate, for authorization to amend the date of first use anywhere to the same date as the date of the first use in commerce. This may be done by examiner’s amendment.
Indefinite phraseology of the type described above is not considered to be misleading, because it does give notice that, when called upon to do so, the applicant may undertake to prove a date earlier than the one stated.
The presumed dates discussed above are not entered into the automated records of the USPTO, or printed in the Official Gazette or on the certificate of registration. Instead, only the information provided by the applicant is printed. Thus, if the applicant states that the mark was first used "at least as early as January of 1994," the date printed is "1/0/1994." If applicant states that the mark was first used "sometime in 1965," the date printed is "0/0/1965."
In an inter partes proceeding, a date of use must be established by appropriate evidence. A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant. 37 C.F.R. §2.122(b)(2); Trademark Trial and Appeal Board Manual of Procedure (TBMP) §704.04.
See TMEP §903.06(a) regarding apparent discrepancies between dates of use and execution dates.
