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 §§804-804.05 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. §§2.76, 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. 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 §§1604–1604.21(d) 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. §§7.36–7.37; TMEP §1613.
See TMEP §1303.01(a)(i) for use in commerce in a collective trademark or collective service mark application, §1304.02(a)(i) for use in commerce in a collective membership mark application, and §1306.02(a)(i) for use in commerce in a certification mark application.
The power of the federal government to register marks comes from the commerce clause of the Constitution. Section 1 of the Trademark Act, 15 U.S.C. §1051, permits application for registration of "a trademark used in commerce" (15 U.S.C. §1051(a) ) or of a trademark that a person has a bona fide intention to use in commerce (15 U.S.C. §1051(b)).
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress." Section 45 defines "use in commerce" as follows:
The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--
The definition of use in commerce (TMEP §901.01) was amended by the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935, to add the phrase "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." The primary purpose of the amendment was to eliminate the practice of "token use," or use made solely to reserve rights in a mark.
The legislative history of the TLRA makes it clear that the meaning of "use in the ordinary course of trade" will vary from one industry to another. The report of the House Judiciary Committee stated that:
While use made merely to reserve a right in a mark will not meet this standard, the Committee recognizes that "the ordinary course of trade" varies from industry to industry. Thus, for example, it might be in the ordinary course of trade for an industry that sells expensive or seasonal products to make infrequent sales. Similarly, a pharmaceutical company that markets a drug to treat a rare disease will make correspondingly few sales in the ordinary course of its trade; the company’s shipment to clinical investigators during the Federal approval process will also be in its ordinary course of trade....
H.R. Rep. No. 1028, 100th Cong. 2d Sess. 15 (1988).
The report of the Senate Judiciary Committee stated:
The committee intends that the revised definition of "use in commerce" be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval....
S. Rep. No. 515, 100th Cong. 2d Sess. 44-45 (1988). See also Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n.8 (TTAB 1994) , aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (Table).
Therefore, some factors to consider when determining compliance with the statutory requirement for a "bona fide use of a mark in the ordinary course of trade" are: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. See Automedx Inc. v. Artivent Corp., 95 USPQ2d 1976 (TTAB 2010) (finding sales of demonstration models of portable medical ventilators to military constituted bona fide use of mark in commerce); see also Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013) (finding that applicant had not made bona fide use of its mark in commerce, as applicant had not sold or transported goods bearing the mark in commerce as of the application filing date).
The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress.15 U.S.C. §1127; see Christian Faith Fellowship Church v. Adidas AG,841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir.2016) . The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.
"Territorial commerce" is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the U.S. Virgin Islands) or between the United States and a territory of the United States.
Intrastate use of a mark may qualify as use in commerce within the meaning of the Act if the intrastate use is of a type that would, taken in the aggregate, have a direct effect on interstate commerce. See Christian Faith Fellowship Church,841 F.3d at 993, 120 USPQ2d at 1645 (finding intrastate sale of two hats to out-of-state customer was "use in commerce" because such a transaction is "‘quintessentially economic’" and, "taken in the aggregate, would cause a substantial effect on interstate commerce"); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in "use in commerce"); In re Silenus Wines, Inc.,557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (intrastate sale of imported wines by importer constitutes "use in commerce," where goods bearing labels supplied by applicant were shipped to applicant in United States); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964) (automotive service station located in one state was rendering services "in commerce" because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020 (TTAB 1984) (billiard parlor services satisfy the "use in commerce" requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Dep't Stores, Inc.,137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).
In some cases, services such as restaurant and hotel accommodation services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause. See In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968) ; In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967).
The term "foreign" is not acceptable to specify the type of commerce in which a mark is used, because it does not clearly indicate that the mark is in use in a type of commerce that the U.S. Congress can lawfully regulate. Unless the "foreign commerce" involves the United States, Congress does not have the power to regulate it. Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States. Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Aktieselskabet af 21.November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861 (TTAB 2006); Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2d Cir. 1998); Mother’s Rests. Inc. v. Mother’s Bakery, Inc., 498 F. Supp. 847, 210 USPQ 207 (W.D.N.Y. 1980); see also Honda Motor Co., v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) ("[T]he evidence that applicant relies upon through its foreign registrations and Internet printouts does not demonstrate trademark use for the claimed goods. Further, these documents do not show that applicant has an intent to use the mark in the United States.")
Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997) , aff'd, 152 F.3d 920 (2d Cir. 1998) (Table).
An applicant is not required to specify the type of commerce in which the mark is used. The USPTO presumes that an applicant 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. See TMEP §901.04 regarding the circumstances where an examining attorney should inquire as to whether the mark is in use in commerce that can be regulated by the U.S. Congress.
It is the responsibility of the applicant and the applicant’s attorney to determine whether an assertion of use in commerce is supported by the relevant facts. The validity of an applicant’s assertion of use in commerce generally does not arise in ex parte examination. The examining attorney will normally accept the applicant’s verified claim of use in commerce without investigation into whether the use referred to constitutes "use in commerce."
An applicant is not required to specify the type of commerce in which the mark is used. See TMEP §901.03. However, if the applicant specifically states that the mark is in use in commerce that cannot be regulated by the U.S. Congress, the applicant has not met the statutory requirement for a verified statement that the mark is in use in commerce, and a specification of the date of first use in commerce, as defined in §45 of the Trademark Act. Accordingly, the examining attorney must advise the applicant that it appears that the mark is not in use in a type of commerce that can be regulated by the U.S. Congress and must require that the applicant either submit a verified statement that "the mark is in use in commerce that can be regulated by the U.S. Congress," or amend the basis of the application to a bona fide intention to use the mark in commerce under §1(b) of the Act, if permitted by 37 C.F.R. §2.35. See TMEP §806.03(c) regarding amendment of the basis from §1(a) to §1(b).
If the application record contains evidence or information indicating that the mark may not be in use in commerce that "may lawfully be regulated by Congress," the examining attorney must ask the applicant whether there is use in commerce that may lawfully be regulated by the U.S. Congress and require a satisfactory explanation or showing of such use. The examining attorney may also require additional information or evidence concerning the use of the mark to permit full consideration of the issue. 37 C.F.R. §2.61(b); TMEP §814.
Section 1(b) of the Trademark Act permits the filing of an application to register a trademark or service mark on the basis of the applicant’s bona fide intention to use the mark in commerce for the identified goods or services. See 37 C.F.R. §§2.2(l), 2.32(a)(5), 2.34(a)(2). Before a registration will issue, however, the mark must be in actual use in commerce on or in connection with all the goods or services specified in the application and file an allegation of use of the mark in commerce (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) ) that states that the mark is in use in commerce on or in connection with the goods or services, includes dates of use for each class, and includes one specimen evidencing such use for each class.
See 37 C.F.R. §2.76 and TMEP §§1104–1104.11 regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109–1109.18 regarding statements of use.
See TMEP §1303.01(a)(ii) regarding an applicant’s bona fide intention to use the mark in commerce for a collective trademark or collective service mark application, §1304.02(a)(ii) regarding an applicant’s bona fide intention to use the mark in commerce for a collective membership mark application, and §1306.02(a)(ii) regarding an applicant’s bona fide intention to use the mark in commerce for a certification mark application.
When asserting use of a mark in commerce in a trademark or service mark application, an applicant must specify the date of first use anywhere and the date of first use in commerce, either in an original application under §1(a) of the Trademark Act (see 37 C.F.R. §2.34(a)(1)(ii)-(iii) ), or in an allegation of use in an application under §1(b) (see 37 C.F.R. §§2.76(b)(1)(iii),2.88(b)(1)(iii) ). The dates of use must be verified, i.e., supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.34(a)(1)(ii)-(iii) ), 2.71(c). See TMEP §§804–804.05 regarding verification.
An applicant filing under §1(b) is not required to state dates of use in the original application, but must include dates of use in an allegation of use under §1(c) or §1(d). See 37 C.F.R. §§2.76(b)(1)(iii), 2.88(b)(1)(iii).
A §1(b) applicant may assert dates of use that are earlier than the filing date of the application in an amendment to allege use or statement of use.
See TMEP §1303.01(a)(i)(B) regarding dates of use for collective trademarks or collective service marks, §1304.02(a)(i)(B) regarding dates of use for collective membership marks, and §1306.02(a)(i)(A) regarding dates of use for certification marks.
In a trademark or service mark application, the date of first use anywhere is the date when the goods were first sold or transported, or the services were first rendered, under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
See TMEP §1303.01(a)(i)(B) regarding dates of use for collective trademarks or collective service marks, §1304.02(a)(i)(B) regarding dates of use for collective membership marks, and §1306.02(a)(i)(A) regarding dates of use for certification marks.
In a trademark or service mark application, the date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127. See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce that may be lawfully regulated by the U.S. Congress.
In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) did not use the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.34(a)(1)(ii)-(iii). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.34(a)(1)(ii)-(iii), 2.71(c).
An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
See TMEP §1303.01(a)(i)(B) regarding dates of use for collective trademarks or collective service marks, §1304.02(a)(i)(B) regarding dates of use for collective membership marks, and §1306.02(a)(i)(A) regarding dates of use for certification marks.
The application or allegation of use must specify both the date of first use anywhere and the date of first use in commerce. If the date of first use anywhere was also in a type of commerce that may be regulated by the U.S. Congress (see TMEP §901.03), the date of first use and the date of first use in commerce will be the same date.
The date of first use anywhere will always be either earlier than or the same as the date of first use in commerce. If the date of first use anywhere specified in an application or allegation of use is later than the date of first use in commerce, the examining attorney must require clarification. See 37 C.F.R. §2.61(b).
The requirement that an applicant specify the date of first use anywhere as well as the date of first use in commerce applies to all applicants, including foreign applicants, in applications filed under §1(a) or §1(b) of the Act. In re Sevi S.p.A., 1 USPQ2d 1671, 1671 (TTAB 1986).
