Inquiry Regarding Use in Commerce

It is the responsibility of the applicant and the

applicant’s attorney to determine whether an assertion of use in commerce is

supported by the relevant facts.  The validity of an applicant’s assertion of use in

commerce generally does not arise in ex parte examination.  The examining attorney

will normally accept the applicant’s verified claim of use in commerce without

investigation into whether the use referred to constitutes “use in commerce.”

An applicant is not required to specify the type of

commerce in which the mark is used.

See

TMEP §901.03

.

However, if the applicant specifically states that the mark is in use in commerce

that cannot be regulated by the U.S. Congress, the applicant has not met the

statutory requirement for a verified statement that the mark is in use in commerce,

and a specification of the date of first use in commerce, as defined in §45 of the

Trademark Act.  Accordingly, the examining attorney must advise the applicant that

it appears that the mark is not in use in a type of commerce that can be regulated

by the U.S. Congress and must require that the applicant either submit a verified

statement that “the mark is in use in commerce that can be regulated by the U.S.

Congress,” or amend the basis of the application to a bona fide intention to use the

mark in commerce under §1(b) of the Act, if permitted by

37 C.F.R.

§2.35

.  See

TMEP §806.03(c)

regarding

amendment of the basis from §1(a) to §1(b).

If the application record contains evidence or

information indicating that the mark may not be in use in commerce that “may

lawfully be regulated by Congress,” the examining attorney must ask the applicant

whether there is use in commerce that may lawfully be regulated by the U.S. Congress

and require a satisfactory explanation or showing of such use.  The examining

attorney may also require additional information or evidence concerning the use of

the mark to permit full consideration of the issue.

37 C.F.R.

§2.61(b)

;

TMEP §814.

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