When a First Use is Not a First Use in Commerce for a Trademark Application

First Use In Commerce USPTO TrademarkThe date that you first used your trademark could be, but probably is not, the correct date to use as the first use in commerce date in a federal trademark application. Why? Because in many cases the first use of the trademark was on a website or marketing material before an actual sale or shipment of the goods or rendering of the service.

First Use in Commerce

For each class of goods or services in a federal trademark, you must declare when you first used the mark in commerce for those goods or services. Use in commerce has a specific meaning under the law. It does not mean simply using the mark. The use must also be combined with a sale of goods or a rendering of the services.

Use with Goods

For goods, the law provides a mark is used in commerce when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce. Therefore the mark must be used on or adjacent the goods as just described and the goods must be sold or transported in commerce.

For example, if you are selling food goods, it is not enough that the food goods were advertised. They must also be sold (or transported in commerce). If you first advertised the food goods with a flyer or on a website on January 1 and then made a first sale on January 5 of the food goods having the mark to an out-of-state customer, then the first use date for the application would be January 5. On January 5 the mark was used on the goods and the goods were sold. January 1 is not the first use date in commerce for the trademark application because the goods were not sold on or before that date. Advertising is not enough.

Use with Services

If you mark is used with services, the mark deemed to be used in commerce when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Therefore use requires (1) the mark to be used or displayed in the sale or advertising using the mark and (2) rendering the services.

For example, an architect launched a website on January 6, signed an engagement with a out-of-state client to provide architecture services on January 10, and delivered preliminary designs to the client on January 30. The use of the mark on the website on January 6 is not a use in commerce for federal trademark application purposes because services have not yet been rendered under the mark.

It is not clear if the activities on January 10 would qualify as having rendered services, because on that day only the engagement was signed and the facts do not indicate that any services were rendered on that date. On January 30 the services would likely be considered rendered because the architect delivered work product related to the services to the client on that date. Therefore, under these facts, January 30 would be the “at least as early as” use in commerce date.

There is some case law indicating that a use in commerce for services might occur before the date that services are actually rendered. However its usually best to take a conservative approach and specify a first use date when services have clearly been rendered for a customer.

What if in the above scenario, the architect met with the client on January 10 and during the consultation described the architectural options for the client’s project and suggested architectural changes to the client’s original plan. The suggested architectural changes are likely a rendering of architectural services, unless indicated otherwise by industry practice in the architectural field. Therefore, January 10 would be the “at least as early as” use in commerce date.


Preparing to Use and Advertising Alone is Not Use

Preparing to use and advertising without a sale of goods or rendering of services does not qualify as a use in commerce. In Aycock Engineering v. Airflite Inc. 530 F.3d 1350 (Fed.Cir. 2009), Aycock’s trademark registration on AIRFLITE was cancelled because Aycock had not rendered the services he claimed in the application before the application was filed. AIRFLITE was registered in 1974 for the services of “arranging for individual reservations for flights on airplanes.” The registration was renewed in 1994. In 2001 Airflite Inc. filed a petition to cancel the registration alleging that Aycock did not use the mark for the services before registration.

The court described Ancock’s plans: “Mr. Aycock did not plan on operating the chartered air taxi services himself. Instead, his goal was to develop a system where he would serve his customers by acting as the middleman, or ‘communication link,’ between the customer and one of the air taxi service operators he contracted with to provide flights on an individual seat basis.”

Aycock prepared for operations by: (1) obtained two toll-free telephone numbers that the public could use to make reservations; (2) inviting air taxi operators to join his operation with flyers providing information about the AIRFLITE service, and (3) entering contracts with some air taxi service operators were the operators agreed to participate in the AIRFLITE service and paid modest initiation fees to Mr. Aycock.

However, Aycock’s services never got off the ground. Aycock estimated that he would need 300 air service operators under contract to make his service work, but he only got 12 under contract at any one time. He never marketed AIRFLITE service to the general public and did not give the public the opportunity to use the toll free numbers to make reservation. He never arranged for a passenger to fly on a chartered flight.

The court found that Aycock never rendered services of arranging for individual reservations for flights on airplanes and therefore did not use the mark in commerce before the filing date of the application. As the original trademark application did not meet the requirements when it was filed, it was void and the registration was cancelled. The registration was cancelled in 2007 (by the Trademark Board) even though the registration was issued more than 30 years earlier in 1974.

At Least As Early As

Determining the proper at least as early as first use date is important, because declaring a first use date before the actual use can negatively impact your registration. Since the application provides “at least as early as” you can always prove up an earlier date during a dispute if needed. Therefore, when in doubt, error on the said of a later date verses an earlier date if you are uncertain if the earlier date qualifies. Or better yet, contact a trademark attorney for help.

Multiple Items in the Description

If you have multiple items listed in your description of goods/services in the same class, you should declare the date when all the goods/services listed in that class were rendered or sold. For example, say you declare the goods of t-shirts, shorts, and hats in class 25 in your application. You first sold a t-shirt having the mark on February 1, you first sold a pair of shorts having the mark on February 15, and you first sold hats having the mark on April 1. Then the first use date for all of these goods in class 25 would be the latest date of April 1. April 1 is the earliest date when on or before that date all of the listed goods in that class had been sold with the mark.

Save First Use Date Proof

The USTPO does not require that you submit proof showing the date of your first used in commerce. It does require a specimen showing the mark in use. But the specimen does not need to show the date of first use. For example, an invoice showing the date of first sale is not required by the USPTO. In many cases, the specimen (e.g. a photo of the goods having the mark, or advertising of the services) itself will not have a date of the corresponding sale of goods or rendering of services. However, you should keep a copy of such an invoice for your records. If another challenges the validity of your trademark application/registration by questioning your first use dates, having records showing the first use date will better position you to win that fight.

Providing an accurate first use date in commerce is important. In certain cases, providing an incorrect use in commerce date can result in the cancellation of the registration or denial of registration.

Photo credit to flickr user andrechinn under this creative commons license.

Trademark Application Part: The Mark (Drawing)

TrademarkApplication_Mark_and_DrawingFiling a federal trademark application online looks easy. Just fill in the blanks in the online form, right? But it is not necessarily easy. Some errors are uncorrectable and can doom a trademark application. This is the first post in a multi-part series discussing the parts of a U.S. federal trademark application. In this post I’ll discuss the mark (the drawing) portion of the trademark application. Before filing a trademark application you should considered doing a trademark search.

The mark/drawing section of the application is were you specify the mark that you want to register. You will have to choose between a standard character trademark or a special form trademark. If you intend to register a standard character trademark, then you need to know the words/characters of your mark. You can enter the words/characters of your mark in the USPTO form. You don’t need to worry about section 1-4 below. You can skip straight to section 5.

If you intend to file a special form mark, you will have more work to do. A special form mark is one where a logo, font, style, color, or other graphical element is claimed as a feature of the mark in the application. First, you will need to have a JPG version of your mark having a height and a width each in the range of 250 to 944 pixels. The drawing should show the mark by itself and not together with packaging or product in the background (e.g. the STARBUCKS COFFEE drawing below does not include a coffee cup or adjacent advertising or products). A separate part of the application, called the specimen section, is were you provide evidence of the mark used on or in relation to the goods or services. The depiction of the mark in the mark/drawing section is how it will appear on the trademark registration certificate, if granted.

1. Claiming Logo, Font, or Style Elements

What if you have a logo used together with the words/characters of your mark? Or what if you have the characters of your mark provided in a stylized form or font? Should you automatically register your mark as a special form mark? No.

In many, but not all, cases the best course will be to register your mark as a standard character mark without any claim to a logo, style or font.  Claiming a logo, font, or style element may cause problems maintaining the registration if you later change/redesign the logo or style elements. In other words, are you sure you will like the style or logo elements in 10 years, or will they need a design refresh?

On the other hand, if the words/characters of your mark are weak, then you may want to include a logo or style elements to increase the chances of obtaining a registration on the Primary Register. There are several factors that you will want to consider in deciding whether to claim a logo, font, or style elements in your trademark application and whether you should pursue multiple trademark applications.

2. Including A Claim of Color or Not

Another issue that arises when claiming a special form mark is whether to include a claim of color. Generally, you probably do not want to make a claim of color, unless the color is very important. When color is not claimed, the registration will cover the mark presented in any color arrangement.

If you do not intend to claim color as a feature of your mark, then the JPG version of your mark that you submit to the USPTO in the mark/drawing section cannot contain any color. Instead the features of your mark should be shown in black. If you are claiming color as a feature of your mark, then the JPG file should show your mark in color.

3. The Drawing: A Quality Drawing

It is important that the JPG file of the Mark (e.g. the drawing) is high quality and shows the mark without noise or graininess when applying to register a special form mark. The USPTO recommends that the image be between 300 and 350 DPI. The file showing the mark will be what is used when comparing your mark other potential conflicting marks. If a feature of the mark is difficult to distinguish due to poor file quality, this may be held against you as the trademark owner who uploaded the low quality version of the mark.

4. A Description of the Literal Elements and Drawing

StarbucksCoffeeUSPTOImageIf you choose to proceed with a special form mark, the USPTO will require that you describe the literal elements in the mark that are in the uploaded JPG file. Literal elements are the character(s) of the mark appear in the Trademark Office’s standard character set, which includes letters, numbers, and certain other symbols. For example, in Starbucks’ Trademark Registration no. 3,907,157, shown at the right, the literal element is STARBUCKS COFFEE.

Also, the USPTO will require that you provide a description of the mark. The description will describe in words the design elements and the standard characters in the mark and their spacial relationship between one another. The description of the mark for Starbuck’s registration “The mark consists of the wording ‘Starbucks Coffee’ in a circular seal with two stars, and design of a siren (a two-tailed mermaid) wearing a crown.”

If color is claimed, the USPTO will require that you list the the colors that are claimed in the application in a part of the application form providing: “The color(s) [  List of Colors Here  ] is/are claimed as a feature of the mark.”

5. Changes to the Mark After Filing Rarely Allowed

Once your application is submitted changes to the mark are rarely allowed. Therefore, it is important that your mark is presented in the federal application exactly as you are (or will be) using the mark in your business. For example if your trademark has two words, will the words be used separated by a space or will they be run together? The application should include the mark in whichever way you intend to use it. Since you need to submit an example (a specimen) of the mark used on or in connection with the goods or services in addition to the drawing, the USPTO will check to see if your use of the mark matches the mark that you claimed in the mark/drawing section of the application.

Further you should use the mark consistently (e.g. with a space or without) in all of your uses of the mark. Inconsistent use can negatively impact your trademark rights.

6. Conclusion

Gathering and entering accurate information in a trademark application for a special form mark involves more work than for a standard character mark. The first decision that needs to be made in the application process is whether you should make a special form claim in the application. For more information on the mark/drawing section of the trademark application see the USPTO videos here and here.

Lead image credit to USPTO here.

Viewing Patent Application Status and History at USPTO Online with PAIR

USPTO_Public_PAIRThe USPTO provides online access to the file history and the current status of patents and published applications through a system called PAIR (Patent Application Information Retrieval). The file history, sometimes called the file wrapper, is a record of all the documents filed by the applicant and the USPTO regarding a patent or patent application. Review of the file history can be helpful in many circumstances to understand more about what the applicant said to the USPTO, during the prosecution of the application. You can also determine the status of a published application or patent using public PAIR.

Here’s a navigation table to make it easier to skip to the sections that are of interest.

  1. Access and Logging in
  2. Bibliographic Data (Application/Patent Status)
  3. Transaction History
  4. Image File Wrapper (Downloadable Files)
  5. Continuity Data
  6. Maintenance Fees
  7. Published Documents
  8. Address & Attorney/Agent
  9. Display References
  10. Conclusion

1. Access and Logging In
Currently you can access public PAIR by going to http://portal.uspto.gov/pair/PublicPair. Then you will be asked to enter text/characters at the CAPTHCHA stage. Next, you will see a page with a portion showing a tab “Select New Case”. There you have five options for the type of number you will enter in the search box: (1) the patent application number, (2) a control number, (3) the patent number, (4) a PCT number, (5) a publication number. Select the correct option for the number you will enter. Then enter the number in the search box and press the search button.

Patent Number. As an example, I selected the patent number option and entered 8,000,000 in the search box to retrieve the file history of U.S. Patent No. 8,000,000.
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Patent Application Number. Alternatively, I could have selected application number and entered 11874690, which is the application number that corresponds to U.S. Patent No. 8,000,000. If you are looking up your own published patent application, you can select application number radio button and enter your application number. If your patent application has not yet published as an application, you will not be able to access it through public PAIR.

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2. Bibliographic Data (Status)
Next you are presented with the Bibliographic data under the application tab. Bibliographic data contains the application number, the filing date, the application type, the Examiner, the group art unit, the attorney docket number, the class and subclass of the application, the inventor’s name, the entity size, the status of the case, the date of the status update, the location, the application publication date, the application publication number, the patent number, the patent issue date, whether the application was/is subject to the America Invents Act, and at the bottom, the title of the invention.

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3. Transaction History
The transaction history tab shows all the transactions in the case, including items filed by the applicant, and process flows and happenings at the USPTO regarding the application. The transaction history does not provide any links to documents, those are found in the Image File Wrapper tab.

The Transaction history can show you internal happenings at the USPTO related to the case that do not show up as filed documents in the Image File Wrapper tab. For example, as shown below the applicant’s response, which is filed on 2-14-2011, was forward to the Examiner on 2-16-2011.  However, this forwarding notation is not found in Image File Wrapper tab.

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4. Image File Wrapper
The USPTO started providing electronic file histories at the USPTO in 2003. If the patent application was filed before 2003, the file history might not be available online. In that case, you will need to goto the USPTO or hire a service, such as ReedTech, to goto the USPTO for you and copy the file history.

The image file wrapper tab shows all the documents filed by the applicant or issued by the USPTO in the case. The file wrapper tab also allows you to download the documents filed in the case in PDF format, by selecting the corresponding check-box and clicking the “PDF” icon at the top right.

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Non-patent literature (NPL) is viable in the history but not downloadable via PAIR over copyright concerns, e.g. that easy access to these documents will facilitate copyright violations by the public and negatively impact the copyright holders ability to charge for these works. NPL are prior art documents filed by the applicant, such as journal articles, excerpts from books, or other publications. On the image file wrapper tab you can see (not shown above) the NPL in the case of US Patent 8,000,000 was filed on 1-08-2009 and the check box for selecting and downloading at the right is grayed-out.

Looking at the image file wrapper for US Patent 8,000,000, we see that the USPTO issued a non-final rejection on 11-15-2010, which was the third rejection in the case (see the non-final rejection on 3-06-3009 and the final rejection on 7-17-2009). On 2-14-2011 the applicant filed a response presenting remarks having arguments for patentability, amendments to the specification, and amendments to the claims. The response on 2-14-2011 was successful in overcoming the Examiner’s refusal of 11-15-2010 because on 4-08-2011 the USPTO issued a Notice of Allowance (NOA), the applicant paid the patent issue fee on 6-27-2011 and the patent was issued on 7-27-2011.

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5. Continuity Data
The Continuity Data Tab provides information about related patents or patent applications.

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The application that resulted in US Patent 8,000,000, claimed priority to an earlier provisional patent application no. 60/852,875. Also downstream from the US Patent 8,000,000, are three patent applications (11/926,044, 13/168,653, 13/707,984) that claim priority to the application (11/874,690) that resulted in US Patent 8,000,000.

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6. Maintenance Fees
For utility patents, patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. If a patent has issued you can click on the Fees tab, where you are taken to the USPTO maintenance fee page.

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You must enter the patent number and the corresponding application number in order to retrieve maintenance fee information. Here the patent number is 8000000 and the corresponding application number is 11874690. By clicking the “view payment windows” a window similar to the following will be displayed.

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As the USPTO currently provides a six month grace period after the 3 1/2, 7 1/2, and 11 1/2 year deadlines, the USPTO references 4th, 9th, and 12th years rather than 3 & 1/2, 7 & 1/2, and 11 & 1/2 years. The widow when the payment can be made opens six months before the 3 1/2, 7 1/2, and 11 1/2 year date. The USPTO charges a surcharge for payments made in the six month grace period. Therefore the surcharge date is the day after the 3 1/2, 7 1/2, and 11 1/2 year date. The close date is 6 months after the 3 1/2, 7 1/2, and 11 1/2 year date.

By clicking on the Get bibliographic Data button, you will receive information about whether any maintenance fees have already been paid. In the case of the Patent 8,000,000, no fees have yet been paid.

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7. Published Documents
The published documents tab provides a list of publications related to application 11/874,690. In this case, the application was published as an application as US Pat Pub. 2008/0097548 A1 on April 24, 2008 and was published as a patent as US Pat 8,000,000 on May 10, 2011.

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8. Address & Attorney/Agent
The Address & Attorney Agent tab provides the current correspondence address for the patent or application as well as information about the patent attorney or agent representing the patent applicant / owner.
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9. Display References
The display reference tab provides documents containing prior art references (such as patents, patent applications, publications, etc). This is a subset of the documents downloadable from the image file wrapper tab. The NPL is not downloadable as you can see that the box is grayed-out next to the NPL in the screen view below.

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10. Conclusion
Whether you want to check the status of your patent application or you want to learn more about an existing patent or published patent application, USPTO’s public PAIR system provides detailed information about such applications and patents.