TMEP 806.01(a): Use in Commerce - §1(a)

This is the October 2015 Edition of the TMEP

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806.01(a)    Use in Commerce - §1(a)

Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1)      Submit a verified statement that the mark is in use in commerce. 15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §§2.2(k)(1); 2.34(a)(1)(i). If this verified statement is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce as of the application filing date (37 C.F.R. §§2.2(k)(1); 2.34(a)(1)(i));
  • (2)      Specify the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.2(k)(1); 2.34(a)(1)(ii); TMEP §903.01);
  • (3)      Specify the date of the applicant’s first use of the mark in commerce (37 C.F.R. §§2.2(k)(1); 2.34(a)(1)(iii); TMEP §903.02); and
  • (4)      Submit one specimen for each class, showing how the applicant uses the mark in commerce (37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904–904.07(b)).

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. §2.34(b); 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. See 37 C.F.R. §§2.2(k)(1), 2.34(a)(1)(i)' 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 §§1303.01(a)(i)-(a)(i)(C), 1304.02(a)(i)-(a)(i)(C), and 1306.02(a)(i)-(a)(i)(B) for the requirements for a §1(a) basis for collective and certification mark applications.