Use in Commerce

In a trademark or service mark application based on use in

commerce under §1(a) of the Trademark Act,

15 U.S.C.

§1051(a)

, the mark must be in use in commerce on or in connection

with all the goods and services listed in the application as of the application filing

date.

See

37 C.F.R. §§2.2(k)(1)

,

2.34(a)(1)(i)

.  The application must include a statement that

the mark is in use in commerce, verified in an affidavit or declaration under

37 C.F.R. §2.20

.

See

37

C.F.R. §§2.32(a)(5)

,

2.34(a)(1)(i)

. If this verified statement is not filed with the

original application, it must also allege that the mark was in use in commerce on or in

connection with the goods or services listed in the application as of the application

filing date.

37 C.F.R. §2.34(a)(1)(i)

. See

TMEP

§§804-804.05

regarding verification.

In a trademark or service mark application based on

“intent-to-use” under §1(b) of the Trademark Act,

15 U.S.C.

§1051(b)

, the applicant typically begins use in commerce after

the filing date.  The application must include a verified statement that the applicant

has a bona fide intention to use the mark in commerce on or in connection with the goods

or services listed in the application as of the application filing date.

See

37

C.F.R. §§2.2(k)(1)

,

2.32(a)(5)

,

2.34(a)(2)

. Prior to registration, the applicant must use the

mark in commerce on or in connection with all the goods or services specified in the

application and 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)

).

See

37 C.F.R. §§2.76

,

2.88

;

TMEP

§902.

A §1 applicant must use the mark in commerce even if the

applicant asserts §44(d) or §44(e),

15 U.S.C.

§1126(d)-(e)

, as a second basis for filing.  See

TMEP

§806.02

. regarding filing of more than one basis.

Applicants relying

solely

on a foreign

registration as the basis for registration under §44(e) of the Trademark Act are not

required to assert actual use of the mark prior to registration in the United States

st use the mark in commerce even if the

applicant asserts §44(d) or §44(e),

15 U.S.C.

§1126(d)-(e)

, as a second basis for filing.  See

TMEP

§806.02

. regarding filing of more than one basis.

Applicants relying

solely

on a foreign

registration as the basis for registration under §44(e) of the Trademark Act are not

required to assert actual use of the mark prior to registration in the United States.

TMEP

§1009

.

See Crocker Nat'l Bank v. Canadian

Imperial Bank of Commerce

, 223 USPQ

909 (TTAB 1984) .  However, to retain a valid registration, the registrant must file an

affidavit or declaration of use of the mark in commerce under

15 U.S.C.

§1058

at the appropriate times, and establish use in commerce or

excusable nonuse.  See

TMEP §§1604–1604.21(d)

regarding the

affidavit or declaration of continued use or excusable nonuse.

Similarly, applicants requesting an extension of protection of

an international registration to the United States under §66(a) of the Trademark Act are

not required to assert actual use of the mark prior to registration in the United

States.  However, to retain a valid registration, the registrant must file an affidavit

or declaration of use of the mark in commerce under

15 U.S.C.

§1141k

at the appropriate times, and establish use in commerce or

excusable nonuse.

See

37

C.F.R. §§7.36–7.37

;

TMEP §1613.

See

TMEP §1303.01(a)(i)

for use in commerce in a collective trademark or collective service mark application,

§1304.02(a)(i)

for use in commerce in a

collective membership mark application, and

§1306.02(a)(i)

for use in commerce in a certification mark

application.