TMEP 1108.02(e): Bona Fide Intention to Use the Mark in Commerce

This is the October 2015 Edition of the TMEP

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1108.02(e)    Bona Fide Intention to Use the Mark in Commerce

Trademarks and Service Marks

A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance. 37 C.F.R. §2.89(a)(3), (b)(3). The USPTO will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request. In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).

This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. 15 U.S.C. §1051(d)(2); In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).

See TMEP §1101 for additional information about the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce.

Collective Marks and Certification Marks

For 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), a request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued 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). The USPTO will accept an allegation of actual use in commerce as meeting this requirement. Cf. In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).

This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. 15 U.S.C. §1051(d)(2); cf. In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).

See TMEP §1101 for additional information about the requirement for an allegation that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce.