TMEP 1303.01(a)(i): Use in Commerce – §1(a)

This is the October 2015 Edition of the TMEP

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1303.01(a)(i)    Use in Commerce – §1(a)

Under 15 U.S.C. §§1051(a), 1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members (37 C.F.R. §2.44(a)(4)(i)(A));
  • (2) Specify the date of the applicant’s member’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.44(a)(4)(i)(B));
  • (3) Specify the date of the applicant’s member’s first use of the mark in commerce (37 C.F.R. §2.44(a)(4)(i)(B));
  • (4) Submit one specimen for each class, showing how a member uses the mark in commerce (37 C.F.R. §§2.44(a)(4)(i)(C), 2.56(b)(3)); and
  • (5) Submit a verified statement that the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons except members have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s members; and that the facts set forth in the application are true (15 U.S.C. §§1051(a)(3)(C), 1054; 37 C.F.R. §2.44(a)(4)(i)(D)). See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a) of the Trademark Act.

The Trademark Act defines “commerce” as commerce which may lawfully be regulated by Congress, and “use in commerce” as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; see TMEP §§901–901.04.

An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).

An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).

If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).

In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark or service mark for the goods or services covered by the collective trademark or collective service mark registration. See TMEP §1305. The “anti-use-by-owner rule” of §4 of the Trademark Act does not apply to collective marks. See 15 U.S.C. §1054. The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the “anti-use-by-owner rule” in that section applies only to certification marks. Cf. Roush Bakery Prods. Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987), aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989) (stating that the Board no longer believes that the anti-use-by-owner rule is applicable to trademarks).

The same mark may not be used both as a collective trademark or collective service mark and as a certification mark. 37 C.F.R. §2.45(f); TMEP § 1306.04(f).