TMEP 819.01(f)(i): Section 1(a) - Use in Commerce

This is the October 2015 Edition of the TMEP

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819.01(f)(i)    Section 1(a) - Use in Commerce

The requirements for establishing a §1(a) basis are set forth in 37 C.F.R. §2.34(a)(1). See also TMEP §806.01(a).

Specimen(s). The application must include one specimen showing how the applicant uses the mark in commerce for each class of goods/services. TEAS Plus will not accept transmission of a §1(a) application that does not include an attachment in the “Specimen” field. As long as the specimen depicts the mark, no additional fee will be required if registration is refused because the specimen is unacceptable.

An additional fee will be required if the mark on the specimen is materially different from the mark on the drawing. If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered. However, no additional fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material.

Example: The mark on the drawing is ZZZ, and the mark on the specimen is ZEBRAMAX. Amending the drawing to match the specimen would materially alter the mark on the drawing, so the applicant, in effect, has failed to submit a specimen showing use of the mark on the drawing. As a result, the applicant loses TEAS Plus status and the examining attorney will require the additional fee.

Example: The mark on the drawing is ZEBRAMAXX, and the mark on the specimen is ZEBRAMAX. The mark on the drawing is not a substantially exact representation of the mark on the specimen, but the difference between the marks is not material, so the applicant may amend the drawing, or submit a substitute specimen showing use of the mark on the drawing, without paying the additional fee.

Verified Statement of Use in Commerce. The application must include a verified statement that the mark is in use in commerce on or in connection with the goods/services listed in the application. The TEAS Plus form will always include this statement when the applicant asserts a §1(a) basis. See TMEP §819.01(l) regarding verification.

Dates of Use. The application must include a date of first use of the mark anywhere and a date of first use of the mark in commerce for each class of goods/services. When the applicant indicates that it is filing under §1(a), the TEAS Plus form brings up free-text fields in which applicant must type the date of first use anywhere and date of first use in commerce. TEAS Plus will not accept the transmission unless these fields are completed in the appropriate format (MM/DD/YYYY). The applicant will not lose TEAS Plus status if the dates are later amended, as long as the amendment is filed through TEAS.