TMEP 901: Use in Commerce

This is the October 2015 Edition of the TMEP

| Next: §901.01

901    Use in Commerce

In a trademark or service mark application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), the mark must be in use in commerce on or in connection with all the goods and services listed in the application as of the application filing date. See 37 C.F.R. §§2.2(k)(1), 2.34(a)(1)(i). The application must include a statement that the mark is in use in commerce, verified in an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.32(a)(5), 2.34(a)(1)(i). If this verified statement is not filed with the original application, it must also allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §2.34(a)(1)(i). See TMEP §§804 et seq. regarding verification.

In a trademark or service mark application based on “intent-to-use” under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant typically begins use in commerce after the filing date. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. See 37 C.F.R. §§2.2(k)1, 2.32(a)(5), 2.34(a)(2). Prior to registration, the applicant must use the mark in commerce on or in connection with all the goods or services specified in the application and file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). See 37 C.F.R. §§2.72, 2.88; TMEP §902.

A §1 applicant must use the mark in commerce even if the applicant asserts §44(d) or §44(e), 15 U.S.C. §1126(d)-(e), as a second basis for filing. See TMEP §§806.02 et seq. regarding filing of more than one basis.

Applicants relying solely on a foreign registration as the basis for registration under §44(e) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. TMEP §1009. See Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. §1058 at the appropriate times, and establish use in commerce or excusable nonuse. See TMEP §§1604 et seq. regarding the affidavit or declaration of continued use or excusable nonuse.

Similarly, applicants requesting an extension of protection of an international registration to the United States under §66(a) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. §1141k at the appropriate times, and establish use in commerce or excusable nonuse. See 37 C.F.R. §7.37; TMEP §1613.

See TMEP §1303.01(a)(i) for use in commerce in a collective trademark or collective service mark application, TMEP §1304.02(a)(i) for use in commerce in a collective membership mark application, and TMEP §1306.02(a)(i) for use in commerce in a certification mark application.