TMEP 903.04: Amending Dates of Use

This is the October 2015 Edition of the TMEP

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903.04    Amending Dates of Use

Any amendment of the dates 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 an application under §1(a) of the Trademark Act, 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 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.

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.

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.

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.

Compare the following examples.

  • (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.

  • (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.

  • (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.