TMEP 1009: Allegation of Use and Specimen of Use Not Required Prior to Registration
October 2017 Edition of the TMEP
1009 Allegation of Use and Specimen of Use Not Required Prior to Registration
Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants are not required to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). However, if a §44 applicant wishes to assert use in commerce under §1(a) or a bona fide intention to use the mark in commerce under §1(b) as an additional basis, then the applicant must comply with all applicable requirements related to the second basis asserted.
If the applicant provides specimens gratuitously in a §44 application, the examining attorney may refer to the specimens to determine issues unrelated to use, such as whether the mark is merely descriptive.
When the §44 application, as submitted, raises questions concerning the registrability of the mark, the examining attorney may request an explanation, information, literature, or other materials to assist in consideration of the application. 37 C.F.R. §2.61(b); TMEP §814.