Trademarks and Service Marks
Section 1(b)(1) of the Trademark Act, 15 U.S.C. §1051(b)(1), provides that an applicant may file a trademark or service mark application based on a bona fide intention to use a mark in commerce "under circumstances showing the good faith of such person."
A verified statement that the applicant has a bona fide intention to use the mark in commerce must be included in intent-to-use (ITU) applications under §1(b), and in applications under §44 and §66(a). 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a); 37 C.F.R. §§2.33(b)(2), 2.33(e)(1), 2.34(a)(2), 2.34(a)(3)(i), 2.34(a)(4)(ii), 2.34(a)(5). See TMEP §804.02 and §1008 regarding the requirements for a verified statement in §1(b) and §44 applications, and §1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.
If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), 2.34(a)(4)(ii). See TMEP §§804–804.05 regarding verifications.
A verified statement of the applicant’s continued bona fide intention to use the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3); TMEP §§1108.02, 1108.02(e).
For permitted paper filings (see TMEP §301.02), reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has "a bona fide intention to use in commerce the mark on or in connection with . . .," or may use the words "good faith" instead of "bona fide." In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397, 1400 (Comm’r Pats. 1992). However, the wording "in commerce" is required and cannot be varied. In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991); In re B.E.L.-Tronics Ltd., 24 USPQ2d at 1400.
See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44 of the Trademark Act.
The USPTO normally will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. Consideration of issues related to good faith may arise in an inter partes proceeding, but the USPTO will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce. See, e.g., M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015). For example, where an intent-to-use application recites commerce that is unlawful under another federal statute, an inquiry may issue. See TMEP §907.
Collective Marks and Certification Marks
For an application of a collective trademark, collective service mark, collective membership mark, or certification mark filed under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce because use of these types of marks is by someone other than the actual owner. 37 C.F.R. §§2.44(a)(4)(ii), 2.45(a)(4)(ii)(C); TMEP §§1303.01(b)(i), 1304.02(b)(i), 1306.02(b)(i).
A verified statement of the applicant’s bona fide intention and entitlement to exercise legitimate control over the use of the mark in commerce must be included in intent-to-use (ITU) applications under §1(b), and in applications under §44 and §66(a). 37 C.F.R. §§2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v), 2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §§1303.01(b)(i)-(b)(ii), 1304.02(b)(i)-(b)(ii), 1306.02(b)(i)-(b)(ii); see 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a). See TMEP §804.02 and §1008 regarding the requirements for a verified statement in §1(b) and §44 applications, and § 1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.
If the verification is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §§2.44(b)(2), 2.45(b)(2). See TMEP §1303.01(b)(i), §1304.02(b)(i), and §1306.02(b)(i) regarding verifications.
A verified statement of the applicant’s continued bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3); TMEP §1108.02.
In an intent-to-use application, the examining attorney will potentially examine the application twice: first, when the trademark or service mark application is initially filed based on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) (or is initially filed based on the applicant’s bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce, for a collective or certification mark application), and second, when the applicant files 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 TMEP §§1104–1104.11 regarding amendments to allege use and §§1109–1109.18 regarding statements of use. After receipt of the application, the examining attorney will initially examine the application to determine whether the mark is eligible for registration but for the lack of evidence of use. If the mark is determined to be eligible, the mark will be approved for publication and then published for opposition. If the applicant has not submitted an amendment to allege use before approval for publication, and the application is not successfully opposed, the USPTO will issue a notice of allowance. 15 U.S.C. §1063(b)(2); 37 C.F.R. §2.81(b). See TMEP §§1106–1106.04 regarding a notice of allowance. In such a case, the applicant must submit a statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88.
An intent-to-use application is subject to the same requirements and examination procedures as other applications, except as specifically noted. The examining attorney must raise all possible refusals and requirements in initial examination.
To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §1 and §2(a) through (e), 15 U.S.C. §§1051, 1052(a) –(e), according to the same procedures and standards that apply to any other application. That is, the examining attorney must make all appropriate refusals and/or requirements with respect to issues such as ownership, deceptiveness, likelihood of confusion, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co., 48 USPQ2d 1031, 1035 (TTAB 1997) ; In re Am. Psychological Ass’n, 39 USPQ2d 1467, 1469 (Comm’r Pats. 1996).
The examining attorney should not issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §§706.01, 1109.08.
Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic with respect to the goods/services. In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the requirement or refusal must be issued during second examination.
The examining attorney should investigate all possible issues regarding registrability through all available sources. If appropriate, the examining attorney may require that the applicant provide literature or an explanation concerning the intended manner of use of the mark, or the meaning of the mark in relation to the goods/services, under 37 C.F.R. §2.61(b). See TMEP §814; In re DTI P'ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003) ; In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
The examining attorney should also search applicant’s website to see if it provides information about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (rejecting applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent to use and no specimens were yet required, and stating that "[t]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession."); TMEP §710.01(b).
While the examining attorney must examine and act on all possible issues in the initial examination of the application, requirements or refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an allegation of use and a specimen showing use of the mark in commerce. See TMEP §§1202–1202.17(e)(vi) regarding use as a mark. However, an examining attorney may review a §1(b) application for which no allegation of use and specimen have been submitted, and believe it likely that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted. In that instance, this potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from later refusing registration on this basis.
The examination of the drawing during initial examination, before submission of an allegation of use and specimen, will focus primarily on the form of the drawing and compliance with 37 C.F.R. §§2.52, 2.53, and 2.54. Intent-to-use applicants must comply with all formal requirements related to drawings, whether in standard characters or in special form. See TMEP §§807–807.18. See TMEP §1104.10(b)(vi) regarding examination of the drawing after submission of an amendment to allege use, and §1109.12 regarding examination of the drawing after submission of a statement of use. The applicant may not amend the mark in a drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2).
A mark in an intent-to-use application under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use (i.e., either an amendment to allege use that meets the requirements of 37 C.F.R. §§2.76(b) and (c), or a statement of use that meets the requirements of 37 C.F.R. §§2.88(b) and (c) ). 37 C.F.R. §§2.47(d), 2.75(b).
If an intent-to-use applicant requests registration on the Supplemental Register before filing an acceptable allegation of use, the examining attorney will refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. See 37 C.F.R. §2.75(b); TMEP §714.05(a)(i). If an application is based on intent-to-use in addition to another basis, registration of the entire application will be refused on the Supplemental Register unless the applicant either deletes the §1(b) basis or files a request to divide. See TMEP §§1110–1110.12 regarding requests to divide. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b); TMEP §206.01. The filing date of an amendment to allege use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.76(c), and the filing date of a statement of use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.88(c). Due to the change in the effective filing date, the examining attorney must conduct a new search of USPTO records for conflicting marks. In this situation, the USPTO does not alter the original filing date in its automated records. TMEP §206. If the new search shows that a later-filed conflicting application now has an earlier filing date (based on the change in the effective filing date of the subject application), the examining attorney must suspend action on the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208–1208.03(c) regarding the procedures for handling conflicting marks in pending applications.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009) (stating the filing date did not change when applicant, who originally sought registration on the Supplemental Register without alleging use in commerce, amended to seek registration on the Principal Register under §1(b), because use in commerce is not required for receipt of a filing date on the Supplemental Register).
When the applicant files an amendment to allege use that complies with the minimum requirements of 37 C.F.R. §2.76(c) together with an amendment to the Supplemental Register, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
See TMEP §§815–816.05 for additional information about the Supplemental Register.
See TMEP §§1212.09–1212.09(b) regarding claims of distinctiveness under §2(f), 15 U.S.C. §1052(f), in intent-to-use applications.
While §1(b) of the Trademark Act provides for filing a trademark or service mark application based on the applicant’s bona fide intention to use the mark in commerce (or the applicant’s bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce, for a collective or certification mark application), registration may not be granted until the applicant files an acceptable allegation of use. The allegation of use must include verified dates of first use (see TMEP §§903–903.08), and a specimen of use for each class (see TMEP §§904–904.07(b), 1301.04–1301.04(d)).
An allegation of use may be filed as either an amendment to allege use or a statement of use. The principal difference between the amendment to allege use and the statement of use is the time of filing. The amendment to allege use may be filed after the application filing date but before approval of the mark for publication. 37 C.F.R. §2.76(a); TMEP §1104.03. If the applicant does not file an acceptable amendment to allege use during initial examination, or if an amendment to allege use is filed and withdrawn, and the USPTO issues a notice of allowance under 15 U.S.C. §1063(b)(2) (see TMEP §§1106–1106.04), the applicant must file a statement of use within six months of the issuance date of the notice of allowance, or within an extension of time granted for filing of the statement of use. 15 U.S.C. §1051(d); 37 C.F.R. §2.88(a). See TMEP §§1109–1109.18 regarding statements of use.
The applicant may not file the allegation of use during the period after approval of the mark for publication and before issuance of the notice of allowance. 37 C.F.R. §§2.76(a), 2.88(a); TMEP §1104.03. This period is known as the "blackout period." See TMEP §1104.03(b).
See TMEP §1104.02 and §1109.05 regarding the Trademark Electronic Application System (TEAS) form to use for filing allegations of use.
As previously stated, an intent-to-use applicant under 15 U.S.C. §1051(b) must file 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) before issuance of the registration. This section pertains only to amendments to allege use. Statements of use are discussed in TMEP §§1109 -1109.18.
An amendment to allege use is treated as a non-responsive filing. Therefore, filing an amendment to allege use does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in the case, including filing a notice of appeal to the Board or a petition to the Director. See 37 C.F.R. §2.63(d). See TMEP §1104.07 regarding the filing of an amendment to allege use in conjunction with an appeal. Therefore, the applicant must file a separate response to any outstanding Office action. Failure to respond to an outstanding Office action will result in abandonment of the application. See TMEP §718.06 regarding notice of abandonment for failure to respond.
The amendment to allege use must include the following minimum elements before it will be referred to the examining attorney for examination on the merits:
An amendment to allege use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.76(c) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that the petitioner’s verified date of first use in commerce and the statement that the mark was used in advertising combined to substantially comply with the "the mark is in use in commerce" requirement for purposes of filing a statement of use); In re Conservation Tech. Inc., 25 USPQ2d 1079, 1080 (Comm’r Pats. 1992) (finding, for purposes of the requirement that the statement of use state that "the mark is in use in commerce," the wording "in use in commerce at least since" satisfied the requirement based on the term "since," defined as "from a definite past time until now"). The examining attorney will require an allegation that the "mark is in use in commerce" during examination.
See TMEP §1104.08 regarding the requirements for a complete amendment to allege use.
A legal instruments examiner (LIE) will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum filing requirements of 37 C.F.R. §2.76(c). If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits.
With respect to the requirement that the amendment to allege use include a properly signed verification or declaration (see TMEP §611.03(a) regarding who may sign a verification) stating that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce. The examining attorney will determine whether the amendment to allege use was properly signed and filed by the owner. See TMEP §§611.03(a), 1104.10(b)(i).
See TMEP §1104.01(b) regarding processing an amendment to allege use that does not meet minimum filing requirements and §1104.03(c) regarding processing an untimely amendment to allege use.
If an amendment to allege use is timely, but does not comply with the minimum filing requirements of 37 C.F.R. §2.76(c) (see TMEP §1104.01), the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. 37 C.F.R. §2.76(d). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be referred to the examining attorney and will not be examined on the merits. Id.
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an electronic funds transfer (EFT) or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid for a permitted paper filing (see TMEP §301.02)), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or charged back or a check is returned unpaid for a permitted paper filing, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(10). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.
If the amendment to allege use is not signed, the LIE will notify the applicant of the deficiency and advise that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use within six months of the date of issuance to avoid abandonment of the application.
If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. §2.76(c), the applicant must file a petition under 37 C.F.R. §2.146 using the TEAS Petition to Director. In addition to the petition fee (37 C.F.R. §§2.6, 2.146(c) ), the petition should include the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the USPTO.
If a permitted paper amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R §2.20 stating that the specimen is in use in commerce on or in connection with the goods/services (or stating that the specimen is in use in commerce in connection with the collective membership organization, for collective membership marks), before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
After the LIE has taken appropriate action on a defective amendment to allege use (see TMEP §1104.01(b)), the LIE will process any other amendments filed with the amendment to allege use and refer the application to the assigned examining attorney for appropriate action on those other amendments.
If the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(c), the examining attorney will act on any other amendments in the application without considering the amendment to allege use. The examining attorney should issue requirements or refusals according to standard examination procedure without considering the amendment to allege use. Any specimen submitted becomes part of the record and may be relied on in relation to issues other than use.
If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(c), the examining attorney should advise the applicant by telephone or email that the amendment to allege use will be examined on the merits and to disregard the LIE’s action, and should enter an appropriate Note to the File in the record.
Applicants must file an amendment to allege use through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless an exception to the requirement to file documents electronically applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.
An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. §2.76(a)(1).
An amendment to allege use may be filed after commencement of an ex parte appeal. See TMEP §1104.07.
An applicant may not file either an amendment to allege use or a statement of use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance. This period, during which no allegation of use may be filed, is known as the "blackout period." See TMEP §1104.03(b).
An applicant may not file an amendment to allege use until the mark has been in use in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant files a request to divide. 37 C.F.R. §2.76(a)(2)(i). If the applicant files an amendment to allege use before using the mark on or in connection with all the goods/services, but does not file a request to divide, the examining attorney will require the applicant to: (1) withdraw the amendment to allege use (see TMEP §1104.11); (2) delete from the application the goods/services not covered by the amendment to allege use (see TMEP §1104.10(b)(iii)); or (3) file a request to divide out the goods/services that are not yet in use (see TMEP §§1110–1110.12).
Under 37 C.F.R. §2.76(a)(1), the USPTO will not review an amendment to allege use filed after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. §2.88(a)(1), the USPTO will not review a statement of use filed before the date of issuance of the notice of allowance. These two rules combine to create a time period when neither an amendment to allege use nor a statement of use may be filed. This period is known as the "blackout period." An applicant will not be permitted to electronically file an amendment to allege use or statement of use during the blackout period using TEAS. Any permitted paper-filed amendment to allege use or statement of use (see TMEP §301.02) submitted during this period will be deemed untimely and the fee refunded. In re Sovran Fin. Corp., 25 USPQ2d 1537 (Comm’r Pats. 1991). See TMEP §1104.03(c) regarding processing amendments to allege use filed during the blackout period.
Intent-to-use applicants who filed under 15 U.S.C. §1051(b) are encouraged to check the TSDR database on the USPTO website at https://tsdr.uspto.gov/ to determine the status of the application before filing an amendment to allege use.
If a review of the prosecution history of the application shows that the application has been approved for publication and a notice of allowance has not issued or was cancelled, the blackout period is in effect and an amendment to allege use should not be filed. The applicant should instead wait until the notice of allowance issues and then file a statement of use.
An applicant will not be permitted to electronically file an amendment to allege use or statement of use during the blackout period using TEAS. If the applicant attempts to do so, the applicant will receive an error message indicating that the application is in the blackout period and advising that the applicant must wait until the status of the application changes to "Notice of Allowance issued" to file the form, and the applicant may monitor the status of the application at https://tsdr.uspto.gov.
Permitted paper filings. If an applicant submits a permitted paper-filed amendment to allege use (see TMEP §301.02) during the blackout period, the USPTO will notify the applicant that the amendment to allege use is untimely and will not be reviewed, and refund any filing fee. See 37 C.F.R. §2.76(a)(1).
