1202.06(c) Goods in Trade in §1(b), §44, and §66(a) Applications
In an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the question of whether a proposed mark is used on goods in trade usually does not arise until the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) because this issue is based on the manner in which the mark is used. However, if the identification of goods in a §1(b) application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the record indicates that the mark will not be used on goods in trade, without the need to await consideration of the specimen(s), the examining attorney may issue the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a refusal based on the lack of use on goods in trade where the record clearly indicates that the mark will not be used on goods in trade. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).