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.