Why use a 1(a) filing basis? What Does ‘Use In Commerce’ mean for a 1(a) or 1a trademark?

What is the Definition of Use in Commerce? The definition of use in commerce with regards to trademarks is found in 15 USC 1127:

Mark. The term “mark” includes any trademark, service mark, collective mark, or certification mark. Use in commerce. The term “use in commerce” means the bona fide* use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods [products] when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

DEFINITION: Date of First Use Anywhere

TMEP 903.01    Date of First Use Anywhere

In a trademark or service mark application, the date of first use anywhere is the date when the goods were first sold or transported, or the 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.

DEFINITION: Date of First Use in Commerce

TMEP 903.02    Date of First Use in Commerce

In a trademark or service mark application, the date of first use in commerce is the date when the goods were first sold or transported, or the 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.  See TMEP §901.01 for definitions of "commerce" and "use in commerce," and TMEP §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) did not use 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. §2.34(a)(1)(ii)-(iii).  The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20.   See 37 C.F.R. §§2.34(a)(1)(ii)-(iii), 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.

See TMEP §1303.01(a)(i)(B) regarding dates of use for collective trademarks or collective service marks, TMEP §1304.02(a)(i)(B) regarding dates of use for collective membership marks, and TMEP §1306.02(a)(i)(A) regarding dates of use for certification marks.

TMEP 903.03    Relation Between the Two Dates of Use (First use anywhere and First use in commerce)

The application or allegation of use must specify both the date of first use anywhere and the date of first use in commerce.  If the date of first use anywhere was also in a type of commerce that may be regulated by the U.S. Congress (see TMEP §901.03), the date of first use and the date of first use in commerce will be the same date.

The date of first use anywhere will always be either earlier than or the same as the date of first use in commerce.  If the date of first use anywhere specified in an application or allegation of use is later than the date of first use in commerce, the examining attorney must require clarification. See 37 C.F.R. §2.61(b).

The requirement that an applicant specify the date of first use anywhere as well as the date of first use in commerce applies to all applicants, including foreign applicants, in applications filed under §1(a) or §1(b) of the Act.   In re Sevi S.p.A., 1 USPQ2d 1671, 1671 (TTAB 1986).

*DEFINITION: Bona Fide Use

TMEP 901.02    Bona Fide Use in the Ordinary Course of Trade

The definition of use in commerce ( TMEP §901.01) was amended by the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935, to add the phrase "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark."  The primary purpose of the amendment was to eliminate the practice of "token use," or use made solely to reserve rights in a mark.  

The legislative history of the TLRA makes it clear that the meaning of "use in the ordinary course of trade" will vary from one industry to another.  The report of the House Judiciary Committee stated that:

While use made merely to reserve a right in a mark will not meet this standard, the Committee recognizes that "the ordinary course of trade" varies from industry to industry.  Thus, for example, it might be in the ordinary course of trade for an industry that sells expensive or seasonal products to make infrequent sales.  Similarly, a pharmaceutical company that markets a drug to treat a rare disease will make correspondingly few sales in the ordinary course of its trade; the company’s shipment to clinical investigators during the Federal approval process will also be in its ordinary course of trade....

H.R. Rep. No. 1028, 100th Cong. 2d Sess. 15 (1988).

The report of the Senate Judiciary Committee stated:

The committee intends that the revised definition of "use in commerce" be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval....

S. Rep. No. 515, 100th Cong. 2d Sess. 44-45 (1988).   See also Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n.8 (TTAB 1994) , aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (Table).

Therefore, some factors to consider when determining compliance with the statutory requirement for a "bona fide use of a mark in the ordinary course of trade" are:  (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. See Automedx Inc. v. Artivent Corp., 95 USPQ2d 1976 (TTAB 2010) (finding sales of demonstration models of portable medical ventilators to military constituted bona fide use of mark in commerce); see also Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013) (finding that applicant had not made bona fide use of its mark in commerce, as applicant had not sold or transported goods bearing the mark in commerce as of the application filing date).

** from 15 U.S.C. §1127 [DEFINITION] Abandonment of mark.

A mark shall be deemed to be "abandoned" if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

Why use a 1(a) filing basis?

If you have an established business using a trademark and want to make a priority claim of use in commerce, a 1(a) or 1a trademark application contains a claim of a first use date.

Note: If someone else has registered a trademark or is trying to register a trademark that you have already been using for a long time (longer than the other party) but you didn’t apply or register with the USPTO, you may need to oppose or cancel that application or registration in order to avoid confusion in the marketplace or to avoid having a trademark infringement suit filed against you. Delay in doing so can mean loss of rights.

When claiming trademark basis 1a for a list of goods, ALL of the goods must be in use in commerce at the time the claim is made to the USPTO. An applicant may not claim a Section 1(a) filing basis unless the mark is in use in commerce on or in connection with all goods and/or services covered by the Section 1(a) basis as of the application filing date. Trademark Rule 2.34(a)(1)(i).

Nonuse in connection with some, but not all, of the identified goods and services as of the filing date of a Section 1(a) application is a basis for denial of registration only as to those goods and services on which the mark was not in use. Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006). Mere preparations to use a mark sometime in the future are insufficient to constitute use in commerce. Aycock Eng. Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1308 (Fed. Cir. 2009).

* Note: ‘Use in commerce’ may have different meanings with regards to liability than it does with regards to gaining rights for registration. See Rescuecom Corp. v. Google Inc., 562 F. 3d 123 (2nd Cir. 2009). A restrictive definition of "use in commerce" as set forth in §45 defines standards of qualification for an owner to register a mark and receive the benefits and protection of the Trademark Act. These standards are not the same definitions as used for determining liability.

Does Registering For a URL (domain name) Using My Trademark Qualify As A Use In Commerce? Just using a name as a domain name is not a trademark use.

TMEP §1215.02: A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (finding that irestmycase did not function as a mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).

Does having artwork ready to use constitute “Use in commerce”? Can I use artwork for a specimen of use?

TMEP 904.04(a)    Drawing or "Picture" of the Mark; Digitally Created or Altered Specimen

A photocopy of the drawing required by 37 C.F.R §2.51  is not a proper specimen.  37 C.F.R. §2.56(c).  Similarly, the specimen may not be a "picture" of the mark, such as an artist’s rendering, a printer’s proof, a computer graphic that merely illustrates what the mark looks like, or an image of the goods or its packaging or advertising matter for services that has been digitally created or altered to include the mark. Such items do not show actual use of the mark on or in connection with the goods or services in commerce and registration must be refused under Sections 1 and 45 of the Act. 15 U.S.C. §§1051, 1127;   see In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that "a mere drawing of the goods with an illustration of how the mark may be displayed" was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it is does not show actual use in commerce).

Does having an app constitute use in commerce for a service mark? Maybe!

TMEP 1301.04(h)(iv)(D)    Software Applications ("Apps")

Software applications ("apps") for smartphones and computer tablets are now commonly used to provide online services. Apps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services. Common specimens for such apps are usually screenshots of electronic devices showing the apps rendering the services. Such a specimen will not always depict proper service-mark use of the mark in connection with the identified services unless the displayed screenshot clearly and legibly shows the mark associated with the identified services as the services are rendered or performed via the app. Mere depiction of the mark in the screenshot without sufficient depiction of the activity identified in the services does not establish service mark use within the definition of "use in commerce" under Trademark Act Section 45. 15 U.S.C §1127  ("For purposes of this chapter, a mark shall be deemed to be in use in commerce – (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce[.]")

Is the Date That I Registered My Domain Name My First Use in Commerce? Only if your web site is also using the domain name as a trademark in a valid manner already. Web pages that do not show a proper use in commerce are common refusals as specimen refusals.

Does My Letterhead Count as a Use In Commerce? Maybe depending on use. If the letterhead just identifies the trade name (business entity), it may not function as a use in commerce. Excerpt from TMEP §1202.01: In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994). DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others.

Trademark Use In Commerce [filing basis 1a] Must Be Open and Public (and not just in the planning-to-use stages).

"Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark. “At the very least," in order for an applicant to meet the use requirement, "there must be an open and notorious public offering of the services to those for whom the services are intended." Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)

Is having my trademark on a business plan a use in commerce? [A] mark is not "used" when it is presented to a potential customer as part of a business plan; it must be employed in commerce such that it distinguishes the goods or services of a seller from others in the marketplace. McCarthy on Trademarks & Unfair Competition § 16:1 (4th ed. 1996); see also Allard Enters. v. Advanced Programming Res., 249 F.3d 564, 571-72 (6th Cir. 2001) (distinguishing federal registration of a mark from common law ownership of a trademark). Welsh v. Big Ten Conference Inc., 89 USPQ2d 2035 (N.D. Ill. 2008).

How Do I Show Use In Commerce for My Product? Specimens on Labels, Containers or Displays Show Use In Commerce for Trademarks (goods or products).

According to the TMEP, "a label is an acceptable specimen" where the mark "is applied to the goods or the containers for the goods," even by shipping or mailing labels. § 904.03(a). On containers, "a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen." § 904.03(c). Thus, a product box that bears the trademark, but does not display a picture of the goods or allow customers to see the goods, may be an acceptable specimen. "Solid products have greater flexibility, inasmuch as the mark may be impressed directly on them during the manufacturing process. Of course, use on their containers or associated displays is equally acceptable.". As to displays associated with goods, the Board has found that a display bearing a trademark for chemicals at a trade show booth was an adequate specimen, even though the chemicals were not present or visible at the booth. . .  Thus, tangible specimens—whether labels, containers, or displays—can show use in commerce by describing the goods in sufficient detail in relation to the marks. (internal citations omitted)

In re Sones, 590 F. 3d 1282 (Fed. Cir. 2009)

How Do I Show a Use In Commerce for My Services? Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). A service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.

Are There Other Ways Use In Commerce Can Be Accomplished? Use In Commerce for Goods Can Be Established Is By Transportation.

The requirement for public awareness of the mark is a consistent theme. "The use in commerce required for obtaining a federal registration is generally congruous with the required use of a mark for obtaining ownership under the common law.... Transportation in commerce generally constitutes a `use' without a sale as long as the use is `open and notorious' and before potential customers." Societe de Developments et D'Innovations des Marches Agricoles et Alimentaires-SODIMA-Union de Cooperatives Agricoles v. International Yogurt Co., Inc., 662 F.Supp. 839, 853 (D.Or., 1987). See also Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350, 357-60 (6 Cir., 1998); McCarthy on Trademarks and Unfair Competition, Vol. 3 § 19:118 (" `Transportation' as an alternative to `sale,' will usually require some element of open or public use. It seems clear that `transportation,' as an alternative to `sale,' requires the same elements of open and public use before potential customers. Thus, purely intra-company shipments... do not constitute bona fide shipments to satisfy the `transportation' alternative.").

Gen. Healthcare Ltd. v. Qashat, 254 F.Supp.2d 193, 198 (D.Mass.2003)

My Business is Just Starting Up and We Are Not Making Much Money Yet. Does That Qualify As A Use In Commerce? Trademark Use in Commerce is Not Limited to Profitable Enterprises.

Slow commercial progress, or absence of income or profit, is not a ground of cancellation of registration. Use in commerce under the Lanham Act is not limited to profit-seeking uses. The Lanham Act authorizes cancellation of abandoned marks, but a mark is not abandoned because the proprietor is encountering difficulties in the business. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)

Is my nonprofit use of a trademark a use in commerce?

 It has been held that a party need not be a manufacturer of goods in order to own and register a trademark. As stated by the Board in In re Expo `74, 189 USPQ 48, 49 (1975), There is no question that a party is not required to manufacture products to own and register a trademark. In fact, any person in the normal channels of distribution including a manufacturer, a contract purchaser who has goods manufactured for him, and a retailer or merchant as well as any nonprofit organizations or institution can be the owner of a trademark "in commerce" if he applies or has someone in his behalf apply his own trademark to goods to which he has acquired ownership and title and sells or merely transports such goods in commerce as his own product with the mark, as applied thereto, serving to identify the particular product as emanating from the shipper or seller in his own capacity. See also, Amica Mutual Insurance Company v. R.H. Cosmetics Corp., 204 UPSQ 155, 161-162 (TTAB 1979) (the owner of a mark need only apply the mark to products sold or transported in commerce so that the recipient of the goods identifies the supplier of the goods as the source); Lasek & Miller Associates v. Rubin, 201 UPSQ 831, 833 (TTAB 1978) (it is sufficient for the purported owner of a mark to give the products the benefit of its representation or name and business style).

If Someone Abandoned Their Trademark (DEAD Trademark) at the USPTO, Can I Start Using It? Lack of Use in Commerce (nonuse for three years with no intent to resume) Results in Abandonment of a Mark Leaving Room For Another to Use the Mark. [Note that the word ‘Abandoned’ in this context actually means NOT IN USE rather than an application or registration being DEAD which is a failure to have an active registration.]

"An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark—thereby acquiring priority rights in that mark—after three years of non-use." Imperial Tobacco Ltd., Assignee of Imperial Grp. PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990).

Once a mark is abandoned, it enters the public domain and another party can appropriate it. Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 412 (7th Cir. 1994). With no other parties using a mark, the new user becomes the senior user of the mark. "It is axiomatic in trademark law that the standard test of ownership is priority of use." Sengoku Works v. RMC Int'l, 96 F.3d 1217, 1219 (9th Cir. 1996).

See Specht v. Google Inc (N.D. Ill., 2010).

Should you file a 1(a) or a 1(b) filing basis? Depends on the facts! Having a strategy based on facts rather than just filling out a form should get a better result.

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