1306.02(a)(i)    Use in Commerce – §1(a)

Under 15 U.S.C. §1051(a),  §1054, and 37 C.F.R. §2.45(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying what the applicant is certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(i)(A) );
  • (2) Submit a copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application (37 C.F.R. §2.45(a)(4)(i)(B) );
  • (3) Submit a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant (37 C.F.R. §2.45(a)(4)(i)(C) );
  • (4) Specify the date of the applicant’s authorized user’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.45(a)(4)(i)(D) );
  • (5) Specify the date of the applicant’s authorized user’s first use of the mark in commerce (Id.);
  • (6) Submit one specimen for each class, showing how an authorized user uses the mark in commerce to reflect certification of regional or other origin; material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services (37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(b)(5) ); and
  • (7) 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 authorized users 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 authorized users; and that the facts set forth in the application are true (see 15 U.S.C. §§1051(a)(3)(C),  1054; 37 C.F.R. §2.45(a)(4)(i)(F)). See TMEP §1306.02(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 which 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. §2.45(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).

See TMEP §1306.03(a) regarding statements specifying what the mark certifies, §1306.03(b) regarding certification standards, and §1306.03(c) regarding a statement that the applicant is not engaged in the production or marketing of the goods/services.

1306.02(a)(i)(A)    Dates of Use

When specifying the dates of use as a certification mark, the applicant must indicate that the certification mark was first used by the applicant’s authorized users because a certification mark is not used by the applicant itself. See 37 C.F.R. §2.45(a)(4)(i)(D).

The date of first use anywhere is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’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 is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’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 an authorized user 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. §2.45(a)(4)(i)(D). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.45(a)(4)(i)(D), 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.

1306.02(a)(i)(B)    Specimens

A certification mark specimen must show how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. §2.56(b)(5); see In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) .

Although a certification mark performs a different function from a trademark or a service mark, users of certification marks typically apply them to goods and services in a manner similar to trademarks and service marks. That is, certification marks appear on labels, tags, or packaging for goods, or on materials used in the sale or advertising of services. Thus, specimens of use in certification mark applications generally are examined using the same standards that apply to specimens for trademarks and service marks. See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and TMEP §1301.04-TMEP §1301.04(j) regarding specimens for service marks. However, because it is improper for certification marks to be used by their owners, any specimen of use submitted in support of a certification mark application must show use of the mark as a certification mark by an authorized user. 37 C.F.R. §2.56(b)(5).

Sometimes, the owner/certifier prepares tags or labels that bear the certification mark and that are supplied to the authorized users to attach to their goods or use in relation to their services. See Ex parte Porcelain Enamel Inst., Inc., 110 USPQ 258 (Comm’r Pats. 1956). These tags or labels are acceptable specimens if they are shown affixed to the certified goods. Cf. 37 C.F.R. §2.56(b)(1)-(2). A label or tag that is not shown physically attached to the goods may be accepted if, on its face, it clearly shows the mark in actual use in commerce. See TMEP §904.03(a) for more information regarding unattached labels or tags.

See TMEP §1306.04(c) for information regarding characteristics of certification marks and specimens that show the mark functions as a certification mark and §1306.05(b)(iii) regarding specimens for geographic certification marks.