1304.02(a)(i)    Use in Commerce – §1(a)

Registration of a collective membership mark under Trademark Act §1(a) is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by its members. See In re Mission Am. Coal., 2023 USPQ2d 228, at *12 (TTAB 2023) (collective membership mark refused because specimen showed use of the mark by applicant’s officer and not its members); In re Triangle Club of Princeton Univ., 138 USPQ 332, 332-33 (TTAB 1963) (collective membership mark refused because specimen did not show use of the mark by its members).

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), 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 members’ first use of the mark anywhere to indicate membership in the collective organization (37 C.F.R. §2.44(a)(4)(i)(B) );
  • (3) Specify the date of the applicant’s members’ first use of the mark in commerce (Id.);
  • (4) Submit one specimen for each class, showing how a member uses the mark in commerce to indicate membership in the collective organization (37 C.F.R. §§2.44(a)(4)(i)(C), 2.56(b)(4) ); 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 collective membership organization 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 § 1304.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a).

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 not assert both §1(a) and §1(b) for the same collective membership organization in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).

Nothing in the Trademark Act prohibits the use of the same mark as a collective membership mark by members and, also, as a trademark or service mark by the parent organization (see TMEP §1303.01), but the same mark may not be used both as a collective membership mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f); TMEP §1306.04(f).

1304.02(a)(i)(A)    Manner/Method of Control

See TMEP § 1303.01(a)(i)(A) for information regarding the requirement for a Manner/Method of Control statement for a collective trademark or collective service mark. This requirement applies similarly to collective membership marks.

1304.02(a)(i)(B)    Dates of Use

When setting out dates of use of a collective membership mark, the applicant must state that the mark was first used by a member of the applicant rather than by the applicant, and that the mark was first used on a specified date to indicate membership rather than first used on goods or in connection with services.

The date of first use anywhere is the date when an applicant’s member first indicates membership in the collective organization 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 member first indicates membership in the collective organization 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.

1304.02(a)(i)(C)    Specimens

The owner of a collective membership mark exercises control over the use of the mark but does not itself use the mark to indicate membership. Therefore, a proper specimen of use of a collective membership mark must show use by members to indicate membership in the collective organization. 37 C.F.R. §2.56(b)(4); In re Mission Am. Coal., 2023 USPQ2d 228, at *4, *12 (TTAB 2023); In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343, 345 (TTAB 1983); In re Triangle Club of Princeton Univ., 138 USPQ 332, 332-33 (TTAB 1963).

The most common types of specimens are membership cards and certificates. The applicant may submit as a specimen a blank or voided membership card or certificate.

For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members’ vehicles, are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.

Many associations, particularly fraternal societies, use jewelry such as pins, rings, or charms to indicate membership. See In re Triangle Club of Princeton Univ., 138 USPQ at 332. However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Inst. for Certification of Comput. Pros., 219 USPQ 372, 373 (TTAB 1983) (in view of contradictory evidence in record, specimen with nothing more than CCP on it was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384, 384 (TTAB 1967) (design on specimen did not indicate membership in organization, but merely showed length of service).

Shoulder, sleeve, pocket, or similar patches, or lapel pins, whose design constitutes a membership mark and which are authorized by the parent organization for use by members on garments to indicate membership, are normally acceptable as specimens. Clothing authorized by the parent organization to be worn by members may also be an acceptable specimen.

A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. See In re Mission Am. Coal., 2023 USPQ2d 228, at *4, *12 (collective membership mark refused because specimen showed use of the mark by applicant’s officer and not its members). Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placement of the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.

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

See TMEP §1304.03(b) regarding specimen refusals specific to collective membership marks.