T.M.E.P. § 1301.03
Use of Service Mark in Commerce

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1301.02) | Next Section (§1301.04)

1301.03 Use of Service Mark in Commerce

1301.03(a) Use of Service Mark in Advertising to Identify Services

In examining an application under 15 U.S.C. 1051(a), an amendment to allege use under 15 U.S.C. 1051(c), or a statement of use under 15 U.S.C. 1051(d), the examining attorney ordinarily should refuse registration if the record shows that the services advertised have not been rendered. For example, the use of a mark in the announcement of a future service does not constitute use as a service mark. In re Port Authority of New York, 3 USPQ2d 1453 (TTAB 1987) (advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (advertising of OCEANA marine entertainment park, that was not yet open, held not a valid basis for registration); In re Nationwide Mutual Ins. Co., 124 USPQ 465 (TTAB 1960) (stickers placed on policies, bills and letters announcing prospective name change is mere adoption, not service mark use).

See TMEP §806.03(c) regarding amendment of the basis to intent-to-use under 15 U.S.C. 1051(b) when a §1(a) basis fails; TMEP §1104.10 regarding withdrawal of an amendment to allege use, and TMEP §§1109.16 et seq. regarding the time limits for correcting deficiencies in a statement of use.

1301.03(b) Rendering of Service in Commerce Regulable by Congress

In an application under §1(a) or 1(b) of the Trademark Act, 15 U.S.C. 1051(a) or 1051(b), the applicant must use the mark in commerce before a registration may be granted. Section 45 of the Act, 15 U.S.C. 1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress." See TMEP §§901.01 and 901.03.

The following are three examples of how a service may be rendered in commerce: (1) the applicant's services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant's licensees or franchisees are located in more than one state, and they use the mark. See TMEP §901.03 and cases cited therein.