TMEP 1613.10: Use in Commerce

This is the October 2015 Edition of the TMEP

Previous: §1613.09(d) | Next: §1613.11

1613.10    Use in Commerce

The §71 affidavit or declaration must state that the mark is in use in commerce unless excusable nonuse is claimed. 37 C.F.R. §7.37(f)(1). See TMEP §1613.11 regarding excusable nonuse. The use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition of “use in commerce,” i.e., bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark. 15 U.S.C. §1127. The §71 affidavit or declaration does not have to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record.

A §71 affidavit or declaration that does not state that the mark is in use in commerce is deficient. The holder must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods, services, and/or collective membership organization identified in the registration during the relevant period specified in §71 of the Trademark Act, 15 U.S.C. §1141k, as follows:

  • (1) If the §71 affidavit or declaration was filed during the sixth year after the date of registration in the United States, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the sixth year after the date of registration, if accurate; or
  • (2) If the §71 affidavit or declaration was filed within one year before the end of any ten‑year period after the date of registration in the United States, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within one year before the end of the ten-year period after the date of registration, if accurate; or
  • (3) If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the grace period, if accurate.

If the §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act. If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1613.04 regarding the deadlines for filing §71 affidavits or declarations, and TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

While a substitute affidavit or declaration may be filed after the expiration of the period specified in §71 of the Act, the substitute affidavit or declaration must attest to use within the time period specified in §71 of the Act. Therefore, if the substitute affidavit or declaration does not state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within the relevant period specified in §71 of the Act, the USPTO will not accept the §71 affidavit or declaration, and the registration will be cancelled.