1303.01(a)    Filing Basis

All applications for registration must include a filing basis, regardless of the type of mark, because this is the statutory basis for filing an application for registration of a mark in the United States. TMEP §806. There are five filing bases: (1) use of a mark in commerce under §1(a) of the Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States under §66(a) of the Act. 15 U.S.C. §§1051(a)-(b),  1126(d)-(e), 1141f(a); 37 C.F.R. §2.44(a)(4).

An applicant is not required to specify or otherwise satisfy the requirements for a filing basis to receive a filing date. See Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009) . If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.

In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.

See 37 C.F.R. §2.44(a)(4)  and TMEP §1303.01(a)(i)-(a)(v) for a list of the requirements for each basis.

1303.01(a)(i)    Use in Commerce – §1(a)

Under 15 U.S.C. §1051(a),  §1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members (37 C.F.R. §2.44(a)(4)(i)(A) );
  • (2) Specify the date of the applicant’s member’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.44(a)(4)(i)(B) );
  • (3) Specify the date of the applicant’s member’s first use of the mark in commerce (Id.);
  • (4) Submit one specimen for each class, showing how a member uses the mark in commerce on the member's goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member's services (37 C.F.R. §§2.44(a)(4)(i)(C), 2.56(b)(3) ); and
  • (5) Submit a verified statement that the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons except members have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s members; and that the facts set forth in the application are true (15 U.S.C. §§1051(a)(3)(C), 1054; 37 C.F.R. §2.44(a)(4)(i)(D)). See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a) of the Trademark Act.

The Trademark Act defines "commerce" as commerce that may lawfully be regulated by the U.S. 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. §2.44(c); see 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. 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).

In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark or service mark for the goods or services covered by the collective trademark or collective service mark registration. See TMEP §1305. The "anti-use-by-owner rule" of §4 of the Trademark Act does not apply to collective marks. See 15 U.S.C. §1054.  The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the "anti-use-by-owner rule" in that section applies only to certification marks. Cf. Roush Bakery Prods. Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987) , aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989) (stating that the Board no longer believes that the anti-use-by-owner rule is applicable to trademarks).

The same mark may not be used both as a collective trademark or collective service mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f); TMEP § 1306.04(f).

1303.01(a)(i)(A)    Manner/Method of Control

An applicant must specify the class of persons entitled to use the mark (i.e., the applicant’s members), indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a)(4)(i)(A). A statement that the applicant’s bylaws or other written provisions specify the manner of control is sufficient to satisfy this requirement. This statement does not have to be verified and, therefore, may be entered by examiner’s amendment.

The following language may be used for the above purpose:

Applicant controls the members’ use of the mark in the following manner: [specify, e.g., the applicant’s bylaws specify the manner of control].

1303.01(a)(i)(B)    Dates of Use

When setting out the dates of use for a collective trademark on goods or collective service mark in connection with services, the applicant must state that the mark was first used by a member of the applicant rather than by the applicant. 37 C.F.R. §2.44(a)(4)(i)(B).

The date of first use anywhere for a collective trademark application is the date when an applicant’s member’s goods were first sold or transported or, for a collective service mark application, when an applicant’s member’s 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.

The date of first use in commerce for a collective trademark application is the date when an applicant’s member’s goods were first sold or transported or, for a collective service mark application, when an applicant’s member’s 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   (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce.

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) cannot show that a member used 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. §2.44(a)(4)(i)(B). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.44(a)(4)(i)(B), 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.

1303.01(a)(i)(C)    Specimens

A specimen of use for a collective trademark or collective service mark must show how a member uses the mark on the member's goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3).

The specimen must show use of the mark to indicate that the party providing the goods or services is a member of a certain group. For example, collective trademark specimens should show the mark used on the goods or packaging for the goods; collective service mark specimens should show the mark used in the sale or advertising of the services. See 37 C.F.R. §2.56(b)(3).

The purpose of the mark must be to indicate that the product or service is provided by a member of a collective group. However, the specimen itself does not have to state that purpose explicitly. The examining attorney should accept the specimen if the mark is used on the specimen to indicate the source of the product or service, and there is no information in the record that is inconsistent with the applicant's averments that the mark is a collective mark owned by a collective group and used by members of the group.

See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and §§1301.04–1301.04(j) regarding specimens for service marks.

See TMEP §904.07(a) regarding whether a trademark or service mark specimen shows the mark as actually used in commerce.

1303.01(a)(ii)    Intent to Use – §1(b)

In an application based on intent to use, the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §2.44(a)(4)(ii); see 15 U.S.C. §§1051(b)(3)(B),  1054. See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(b) of the Trademark Act.

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),  which states that (a) the mark is in use in commerce and (b) the applicant is exercising legitimate control over the use of the mark 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(b), 2.88(b). 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 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 Chapter 1100 for additional information about intent-to-use applications.

1303.01(a)(iii)    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. §2.44(a)(4)(iv)(A); 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 §1303.01(a)(ii) regarding the requirements for a §1(b) basis.

Under 15 U.S.C. §§1054,  1126(d), and 37 C.F.R. §2.44(a)(4)(iv), the requirements for receipt of a priority filing date 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. §2.44(a)(4)(iv)(A) );
  • (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. §2.44(a)(4)(iv)(A); see also Paris Convention Article 4(D)); and
  • (3) The applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true (37 C.F.R. §2.44(a)(4)(iv)(B); see 15 U.S.C. §§1051(b)(3)(B),  1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)). See TMEP § 1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act.

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. §2.44(a)(2)(iii); 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 §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis. See TMEP §§1003–1003.08 for further information about §44(d) applications.

1303.01(a)(iv)    Foreign Registration – §44(e)

Under 15 U.S.C. §§1054,  1126(e), and 37 C.F.R. §2.44(a)(4)(iii), the requirements for establishing a basis for registration 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. If the foreign registration or other certification is not in English, the applicant must provide a translation of the document. If the record indicates that the foreign registration will expire before the U.S. registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a proof of renewal from the applicant’s country of origin to establish that the foreign registration has been renewed and will be in full force and effect at the time the U.S. registration will issue. If the proof of renewal is not in the English language, the applicant must submit a translation (37 C.F.R. §2.44(a)(4)(iii)(A); TMEP §§1004.01, 1004.01(b));
  • (2) The applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true (37 C.F.R. §2.44(a)(4)(iii)(B); see 15 U.S.C. §§1051(b)(3)(B),  1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)). See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act; 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 (15 U.S.C.  §1026(b), see TMEP § 1002.03).

If the applicant does not submit a certification or a certified copy of the registration from its 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 United States application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.44(a)(2)(iii); 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 regarding amendments to add or substitute a basis.

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

1303.01(a)(iv)(A)    Scope of Foreign Registration

A registration as a collective trademark or collective service mark in the United States may not be based on a foreign registration that is actually a trademark registration. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) (noting that the U.S. registration cannot exceed the breadth or scope of the foreign registration on which it is based); TMEP §1402.01(b). The scope of the registration, i.e., the nature of the registration right, would not be the same.

The scope and nature of the registration is not always immediately apparent from a foreign registration certificate. Foreign registration certificates may not always clearly identify whether the mark is a trademark, service mark, collective mark, or certification mark and even when they indicate the type, the significance of the term used for the type is not always clear. For example, the designation "collective" represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation "trademark," the body of the certificate might contain language to the contrary.

If a foreign registration certificate has a heading that designates the mark as a collective trademark or collective service mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective trademark or collective service mark, the foreign registration normally may be accepted to support registration in the United States as a collective trademark or collective service mark.

If a foreign registration certificate has a heading that designates the mark as a collective mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective mark, this could indicate that the foreign registration is for a collective trademark, collective service mark, or collective membership mark. See TMEP §1302. In such a situation, the examining attorney must review the foreign registration to determine if there is a reference to goods or services such that the registration is for a collective trademark or collective service mark, or a reference indicating membership only such that the registration is for a collective membership mark. Id.

Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R §2.61.

1303.01(a)(v)    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. §2.44(a)(4)(v). The request must include a verified statement alleging that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of 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; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(v); see 15 U.S.C. §§1051(b)(3)(B),  1054. For a collective trademark or collective service mark application, the required verified statement is not part of the international registration on file at the International Bureau of the World Intellectual Property Organization ("IB"); therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).

See TMEP § 1303.01(b)(ii) for additional information regarding the requirements for the verified statement in applications under §66(a) of the Trademark Act.

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) of the Act. 37 C.F.R. §§2.35(a), 2.44(c). See TMEP §§1904.09–1904.09(b) regarding the limited circumstances under which a §66(a) application may 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.

1303.01(a)(vi)    Multiple Bases, Amending/Deleting the Basis, Review of Basis Prior to Publication/Issue

The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, §806.03 regarding amending the basis, §806.04 regarding deleting a basis, and §806.05 regarding review of a basis prior to publication or issue.