1109.09 Use in Commerce
A verified statement that "the mark is in use in commerce" is a minimum requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(c)(3). If the examining attorney determines, before taking an action in connection with the statement of use, that the verified statement of use in commerce was omitted as of the filing date, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
An application that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, is considered to be substantially in compliance with the minimum filing requirements under 37 C.F.R. §2.88(c)(3). In re Carnicon Dev. Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); see also In re Conservation Tech. Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). Thus, if the applicant files a statement of use containing a verified date of first use in commerce on or before the expiration of the period for filing the statement of use, the applicant has met the minimum filing requirements. The examining attorney must require a verified statement that the "mark is in use in commerce" before approving the statement of use. This statement may be filed after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney’s Office action.
An applicant is not required to specify the method of use or the type of commerce in which a mark is used. TMEP §§901.03, 905.
1109.09(a) Dates of Use
The statement of use must include the dates of first use of the mark and first use of the mark in commerce on or in connection with the goods/services/collective membership organization specified in the notice of allowance. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(iii). The date of first use in commerce may not be earlier than the date of first use anywhere. TMEP §903.03. In addition, the dates of use may not be after the date the statement of use was signed, because current use of the mark must be properly alleged; an applicant may not allege use that has not yet occurred. See 37 C.F.R. §2.88(b)(1)(ii) ); see also TMEP §§903.04 (regarding amending dates of use) and §903.06(a) (regarding discrepancies between dates of use and date of execution).
Where the applicant claims a §1(a) filing basis for some of the goods/services and/or the collective membership organization and a §1(b) filing basis for other goods/services and/or the collective membership organization, the statement of use must include dates of use for the §1(b) goods/services/collective membership organization covered by the notice of allowance. See 37 C.F.R. §2.86(a)(3), (b)(3). See TMEP §903.08 regarding applications in which more than one date is specified for a particular class.
Setting forth the dates of use is not a minimum filing requirement that must be met before the application will be referred to the examining attorney. If the dates of use are omitted from the statement of use, but the statement that "the mark is in use in commerce" is included, the dates may be supplied after the expiration of the statutory period for filing the statement of use. The applicant may also amend or correct the dates of use after the expiration of the deadline for filing the statement of use, if the applicant meets the requirements of 37 C.F.R. §2.71(c)(2). Any amendment to the dates of use must be verified. 37 C.F.R. §2.71(c).
The applicant must state dates of use for each class. 37 C.F.R. §2.86(a)(3), (b)(3). The dates of first use for each class must apply to at least one item in the class but do not have to apply to more than one item. 37 C.F.R. §2.88(b)(1)(iii). However, the applicant must have used the mark in commerce on all items listed in the notice of allowance before filing the statement of use, unless the applicant files a request to divide. 37 C.F.R. §2.88(a)(2); TMEP §1109.03. See TMEP §1110.07 regarding the division of an application in which a statement of use is due.
While the dates of use may be supplied after expiration of the statutory filing period, valid use of the mark in commerce on or in connection with all the goods/services/collective membership organization in the application must be made before the expiration of the statutory filing period. See 37 C.F.R. §2.71(c)(2). If the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use, the examining attorney must refuse registration because the mark was not in use within the time permitted, and also inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney must issue an Office action that includes a three-month response clause. See TMEP §§705.08, 1109.16(b).
1109.09(b) Specimens
The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use. See TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark and §§1301.02–1301.02(f) regarding use of matter as a service mark. The examining attorney must also determine whether the mark as used on the specimens is a substantially exact representation of the mark on the drawing. See TMEP §§807.12(a)–(a)(iii), 1109.12. The examining attorney must issue requirements and refusals, as appropriate, based on the examination of the specimens, subject to the same standards that govern the examination of specimens in a §1(a) application. TMEP §§904–904.07(b).
The submission of at least one specimen with a statement of use is a minimum filing requirement. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(2); In re Campbell, 33 USPQ2d 1055 (Comm’r Pats. 1993). If the examining attorney determines, before taking an action regarding the statement of use, that no specimen was submitted with the statement of use, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
In a multiple-class application, the applicant must submit one specimen for each class of goods/services in the statement of use before the statement of use may be approved. 37 C.F.R. §§2.86(b), 2.88(b)(2). However, only one specimen for one class is needed to comply with the minimum filing requirements. If at least one specimen is filed within the time permitted for filing the statement of use, the applicant may submit specimen(s) for the other class(es) after the expiration of the statutory filing period, if the applicant verifies that the additional specimen(s) was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b).
If the applicant files at least one specimen with the statement of use, but the specimen is unacceptable, the applicant may provide a substitute specimen after the expiration of the time permitted for filing the statement of use, provided that the applicant verifies that the substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline, the examining attorney must refuse registration because the applicant failed to make use of the mark within the time permitted, and inform the applicant that the application is deemed abandoned. The examining attorney must issue a regular Office action with a three-month response clause. TMEP §§705.08, 1109.16(b). See TMEP §1108.03 regarding the filing of an "insurance" request for an extension of time to file a statement of use to gain additional time to make proper use of the mark.
If the dates of first use change as a result of the submission of a new specimen, the applicant must amend the dates of use in the statement of use. The amendment must be supported by an affidavit or declaration. 37 C.F.R. §2.71(c); TMEP §1109.09(a).
See TMEP §904.02(a) regarding electronically filed specimens.