806.01    Requirements for Establishing a Basis

The requirements for establishing a basis for trademark or service mark applications are set forth in TMEP §§806.01(a)–806.01(e).  If these requirements are not met in the original application, the examining attorney will require the applicant to comply with them in the first Office action.

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:

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.   See37 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 §§ 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.

806.01(b)    Intent-to-Use - §1(b)

In a trademark or service mark application based on 15 U.S.C. §1051(b)  and 37 C.F.R. §2.34(a)(2), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce.  15 U.S.C. §1051(b)(3)(B);  37 C.F.R. §§2.2(l); 2.34(a)(2).  If the verified statement 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. §§2.2(l); 2.34(a)(2).

Prior to registration, the applicant must 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) ) that states that the mark is in use in commerce, and includes dates of use, the filing fee for each class, and one specimen evidencing use of the mark 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.

Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act.  37 C.F.R. §2.35(b)(8).

See TMEP §§1303.01(a)(ii), 1304.02(a)(ii), and 1306.02(a)(ii) for the requirements for a §1(b) basis for collective and certification mark applications.

See also TMEP Chapter 1100 for additional information about intent-to-use applications.

806.01(c)    Foreign Priority - §44(d)  

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration.  Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act.  37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03.  If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered.  See TMEP §806.01(b) regarding the requirements for a §1(b) basis.

Under 15 U.S.C. §1126(d)  and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date for a U.S. trademark or service mark application based on a previously filed foreign application are:

  • (1) The applicant must file a claim of priority within six months of the filing date of the foreign application.  37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5);
  • (2) The applicant must:  (a) specify the filing date, serial number, and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.  37 C.F.R. §§2.34(a)(4)(i);  see also Paris Convention Article 4(D); and
  • (3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1126(d)(2);  37 C.F.R. §§2.2(l), 2.34(a)(4)(ii).  This allegation is required even if use in commerce is asserted in the application.   TMEP §806.02(e).  If the verified statement 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. §§2.2(l), 2.34(a)(4)(ii).

The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §2.35(b)(3), (b)(4).  See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis, and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.

See TMEP §§1303.01(a)(iii), 1304.02(a)(iii), and 1306.02(a)(iii) for the requirements for a §44(d) basis for collective and certification mark applications.

See also TMEP §§1003–1003.08 for further information about §44(d) applications.

806.01(d)    Foreign Registration - §44(e)

Under 15 U.S.C. §1126(e)  and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration of a trademark or service mark under §44(e), relying on a registration granted by the applicant’s country of origin, are:

  • (1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin, and, if the foreign registration or other certification is not in English, the applicant must provide a translation of the document.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01, 1004.01(b);
  • (2) The application must include the applicant’s verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1126(e);  37 C.F.R. §§2.2(l), 2.34(a)(3)(i).  This allegation is required even if use in commerce is asserted in the application.   TMEP §806.02(e).  If the verified statement 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. §§2.2(l), 2.34(a)(3)(i); and
  • (3) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law.   See TMEP §§1002–1002.05.

If the applicant does not submit a certification or a certified copy of the registration from the country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect.   See TMEP §1004.01.

The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

An application may be based on more than one foreign registration.  If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished.   TMEP §1004.02.  See TMEP §§806.03–806.03(l) regarding amendments to add or substitute a basis.

See TMEP §§1303.01(a)(iv), 1304.02(a)(iv), 1306.02(a)(iv)-(a)(iv)(A) for a list of the requirements for a §44(e) basis for collective and certification mark applications.

See also TMEP §§1004–1004.02 for further information about §44(e) applications.

806.01(e)    Extension of Protection of International Registration - §66(a)

Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States.   See 37 C.F.R. §2.34(a)(5).  The request must include a verified statement alleging that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation, which is verified by the applicant for, or holder of, the international registration.  37 C.F.R. §§2.33(a),(e)(1), 2.193(e)(1). The verified statement is part of the international registration on file at the IB, for a trademark or service mark application.  37 C.F.R. §2.33(e).  The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO.  Generally, the examining attorney need not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application.  However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.   See TMEP §804.05.

For a collective mark or certification mark application, the required verified statement is not part of the international registration on file at IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §§2.44(b)(2), 2.45(b)(2). See TMEP §§1303.01(a)(v), 1303.01(b)(ii), 1304.02(a)(v), 1304.02(b)(ii), 1306.02(a)(v), and 1306.02(b)(ii) for information regarding the verified statement for collective and certification mark applications based on §66(a).

A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c).  37 C.F.R. §§2.34(b), 2.35(a).  See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO.  Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.

Under 15 U.S.C. §1141g, Madrid Protocol Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:

  • (1) The request for extension of protection contains a claim of priority;
  • (2) The request for extension of protection specifies the filing date, serial number, and the country of the application that forms the basis for the claim of priority; and
  • (3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than six months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

See Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2014) ("Guide to International Registration"), Para. B.II.07.32.