T.M.E.P. § 901
Use 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 (§818) | Next Section (§901.01)

901 Use in Commerce

In an application based on use in commerce under 15 U.S.C. 1051(a) or "intent-to-use" under 15 U.S.C. 1051(b), the applicant must actually use the mark in commerce on or in connection with all of the specified goods/services prior to registration. See 37 C.F.R. §§2.34(a)(1)(i), 2.76(b)(1)(ii) and 2.88(b)(1)(ii).

In a §1(a) application, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application on or before the filing date of the application. The application must include a verified statement (i.e., a statement supported by an affidavit or declaration under 37 C.F.R. 2.20) that the mark is in use in commerce. If the verification is not filed with the original application, the verified statement must allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. 2.34(a)(1)(i). See TMEP §§804 et seq. regarding verification.

In a §1(b) application, the applicant typically begins use in commerce after the filing date. See TMEP §902.

The use requirement applies when in addition to asserting use under §1(a) or a bona fide intent to use under §1(b), the applicant also asserts the benefit of a foreign application under §44(d), or a foreign registration under §44(e), as a second basis for filing. See TMEP §§806.02 et seq. regarding filing on more than one basis.

Applicants relying solely on a foreign registration as the basis for registration under §44(e) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. TMEP §1009. See Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. 1058 at the appropriate times, and establish use in commerce or excusable nonuse. See TMEP §§1604 et seq. regarding the affidavit or declaration of continued use or excusable nonuse.

Similarly, applicants requesting an extension of protection of an international registration to the United States under §66(a) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. 1141k at the appropriate times, and establish use in commerce or excusable nonuse.