TMEP 1306.02(a)(i): Use in Commerce – §1(a)

October 2017 Edition of the TMEP

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1306.02(a)(i)    Use in Commerce – §1(a)

Under 15 U.S.C. §§1051(a), 1054, and 37 C.F.R. §2.45(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying what the applicant is certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(i)(A) );
  • (2) Submit a copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application (37 C.F.R. §2.45(a)(4)(i)(B) );
  • (3) Submit a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant (37 C.F.R. §2.45(a)(4)(i)(C) );
  • (4) Specify the date of the applicant’s authorized user’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.45(a)(4)(i)(D) );
  • (5) Specify the date of the applicant’s authorized user’s first use of the mark in commerce (37 C.F.R. §2.45(a)(4)(i)(D) );
  • (6) Submit one specimen for each class, showing how an authorized user uses the mark in commerce (37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(b)(5) ); and
  • (7) 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 authorized users 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 authorized users; and that the facts set forth in the application are true ( see 15 U.S.C. §§1051(a)(3)(C), 1054; 37 C.F.R. §2.45(a)(4)(i)(F)). See TMEP §1306.02(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. §2.45(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).

See TMEP §1306.03(a) regarding statements specifying what the mark certifies, TMEP §1306.03(b) regarding certification standards, and TMEP §1306.03(c) regarding statements that the applicant is not engaged in the production or marketing of the goods/services.