TMEP 1101: Bona Fide Intention To Use the Mark In Commerce

This is the October 2015 Edition of the TMEP

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1101    Bona Fide Intention To Use the Mark In Commerce

Trademarks and Service Marks

Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file a trademark or service mark application based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person.”

A verified statement that the applicant has a bona fide intention to use the mark in commerce must be included in intent-to-use (“ITU”) applications under §1(b), and in applications under §§44 and 66(a). 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a); 37 C.F.R. §§2.33(b)(2), 2.33(e)(1), 2.34(a)(2), 2.34(a)(3)(i), 2.34(a)(4)(ii), 2.34(a)(5). See TMEP §§804.02 and 1008 regarding the requirements for a verified statement in §§1(b) and 44 applications, and§1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.

If the verification 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)(2), 2.34(a)(3)(i), 2.34(a)(4)(ii). See TMEP §§804–804.05 regarding verifications.

A verified statement of the applicant’s continued bona fide intention to use the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), (b)(3); TMEP §§1108.02, 1108.02(e).

Reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has “a bona fide intention to use in commerce the mark on or in connection with...,” or may use the words “good faith” instead of “bona fide.” In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397, 1400 (Comm’r Pats. 1992). However, the wording “in commerce” is required and cannot be varied. In re Custom Techs Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991); In re B.E.L.-Tronics, 24 USPQ2d at 1400

See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44 of the Trademark Act.

The USPTO will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. Consideration of issues related to good faith may arise in an inter partes proceeding, but the USPTO will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce. See, e.g., M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015).

Collective Marks and Certification Marks

For an application of a collective trademark, collective service mark, collective membership mark, or certification mark filed under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce because use of these types of marks is by someone other than the actual owner. 37 C.F.R. §§2.44(a)(4)(ii), 2.45(a)(4)(ii)(C); TMEP §§1303.01(b)(i), 1304.02(b)(i), 1306.02(b)(i).

A verified statement of the applicant’s bona fide intention and entitlement to exercise legitimate control over the use of the mark in commerce must be included in intent-to-use (“ITU”) applications under §1(b), and in applications under §§44 and 66(a). 37 C.F.R. §§2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v), 2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §§1303.01(b)(i)-(b)(ii), 1304.02(b)(i)-(b)(ii), 1306.02(b)(i)-(b)(ii); see 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a). See TMEP §§804.02 and 1008 regarding the requirements for a verified statement in §§1(b) and 44 applications, and §1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §§2.44(b)(2), 2.45(b)(2). See TMEP §§1303.01(b)(i), 1304.02(b)(i), 1306.02(b)(i) regarding verifications.

A verified statement of the applicant’s continued bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), (b)(3); TMEP §§1108.02.