TMEP 1008: Bona Fide Intention to Use the Mark in Commerce

This is the October 2015 Edition of the TMEP

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1008    Bona Fide Intention to Use the Mark in Commerce

A trademark or service mark application filed under §44(d) or §44(e) on either the Principal or the Supplemental Register must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii). See TMEP §1101 for additional information about this requirement. If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii).

The allegation of the applicant’s bona fide intention to use the mark in commerce is required even if use in commerce is asserted in the application. See In re Paul Wurth, S.A., 21 USPQ2d 1631 (Comm’r Pats. 1991); see also In re Unisearch Ltd., 21 USPQ2d 1559 (Comm’r Pats. 1991) (requirement for verified statement of bona fide intent to use the mark in commerce held not contrary to Paris Convention). This applies similarly to the verified bona fide intent statements required for collective or certification mark applications where use is also asserted.

For the verified statement required in applications filed under §44(d) or §44(e) for collective and certification marks, see TMEP §1303.01(b)(i) for collective trademark or service mark applications, TMEP §1304.02(b)(i) for collective membership mark applications, and TMEP §1306.02(b)(i) for certification mark applications.