As stated in section 1101 Bona Fide Intention To Use the Mark In Commerce of the Trademark Manual of Examination Procedure:

Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce "under circumstances showing the good faith of such person."

A verified statement of the applicant's bona fide intention to use the mark in commerce must be included in intent-to-use ("ITU") applications under §1(b), and in applications under §§44 and 66(a), 15 U.S.C. §§1126 and 1141f(a). See TMEP §1904.01(c) regarding the requirement for a declaration of the applicant's bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii). See TMEP §§804 et seq. regarding verifications.

A verified statement of the applicant's continued bona fide intention to use the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3); TMEP §§1108.02 and 1108.02(e).

Reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has "a bona fide intention to use in commerce the mark on or in connection with...," or may use the words "good faith" instead of "bona fide." However, the wording "in commerce" is required and cannot be varied. In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm'r Pats. 1991); In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397 (Comm'r Pats. 1992).

The USPTO will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant's sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. Consideration of issues related to good faith may arise in an inter partes proceeding, but the USPTO will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce.

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  • An intent-to-use application does not need to meet the requirements of a use-based application.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • It is also clear that the examining attorney is not requiring applicant's intent-to-use application to meet the requirements of a use-based application.
  • An applicant may file an intent-to-use applicant, even if they are actually using the mark.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • An applicant who is actually using its mark may, for various reasons, choose to file an intent-to-use application. McCarthy on Trademarks and Unfair Competition (4th ed. 2005) § 19:13.
  • An intent-to-use applicant may begin using its mark during the examination of the application.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • In addition, an intent-to-use applicant may begin using its mark during the examination of the application.
  • If an intent-to-use application is filed, the applicant is not required to meet the requirements of use-based applications during the initial examination of the application.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • If an intent-to-use application is filed, the applicant is not required to meet the requirements of use-based applications during the initial examination of the application.
  • An intent-to-use applicant may tack on analogous use to its application.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 15 "Even an intent-to-use applicant may tack on analogous use to its application. Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1256-57 (TTAB 1995) ("We note that our modified test contemplates the ‘tacking' of applicant's use analogous to trademark use, and any continuing association of the mark with applicant and its goods which may be shown to have resulted therefrom, onto the constructive use date which applicant would obtain through issuance of a registration for its mark. While this is an issue of first impression for the Board, we believe that an intent-to-use applicant, with a bona fide intent to make use of the applied for mark in commerce, should be permitted to engage in such tacking, if circumstances show that the party has had a continuing intent to cultivate an association of the mark with itself and its goods or services and that such an association was created")."
  • Filing an intent-to-use application does not limit the examining attorney's evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • However, the fact that applicant has filed an intent-to-use application does not limit the examining attorney's evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • Trademark Rule 2.61(b) (37 CFR 2.61(b)) provides that: "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application."
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • This provision is equally applicable to intent-to-use applicants. TMEP § 814 (4th ed. April 2005) ("The examining attorney may request literature, exhibits, and general information concerning circumstances surrounding the mark and, if applicable, its use or intended use") (emphasis added). See In re SPX Corp., 63 USPQ2d 1592, 1597 (TTAB 2002) (Board affirmed a refusal based on an intent-to-use applicant's failure to respond to the examining attorney's requirement for information); In re DTI Partnership LLP, 67 USPQ2d 1699, 1700 n.2 (TTAB 2003) ("Nor did [the intent-to-use] applicant comply with, or even acknowledge, the Trademark Examining Attorney's specific requirements for submission of advertising or promotional materials and for a description of the nature, purpose and channels of trade of the goods").
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • If the examining attorney had made this requirement in this case, applicant would have been required to produce, if it existed, evidence of the type that the examining attorney's Internet search revealed.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • The evidence was found as a result of an Internet search and it was, therefore, properly submitted by the examining attorney. TMEP § 701.01(b) (4th ed. April 2005) ("Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public").
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • Applicant's objection is that the examining attorney is producing a specimen for applicant, which he clearly is not doing. The examining attorney is using the printouts as evidence that the mark is merely descriptive of applicant's services. Accord In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin").
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • The examining attorney could have introduced evidence of other parties' use of the term that he discovered on the Internet, and he is also permitted to introduce evidence that applicant's own literature supports the descriptive nature of the term.
  • To establish priority an intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • The creation of the intent-to-use system did not affect the manner upon which a party can prove priority. The Board implicitly acknowledged this in Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998):
        Just as an applicant in a use-based application can rely, for purposes of priority in a proceeding such as this, upon use (including use analogous to trademark use) prior to the filing date of its application, or even prior to its claimed use dates, an intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application. See Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995). (Intent-to-use applicant permitted to tack use analogous to trademark use to its constructive use date so long as applicant had continuing intent to cultivate association of mark with itself and its goods or services up until the filing date).
  • A party may establish priority by use analogous to trademark use regardless of how the adverse party seeks to establish priority.
    • Fair Indigo LLC v. Style Conscience, Opp. No. 91175571 (TTAB 2007).
      • This principle applies with equal force to a plaintiff in an opposition proceeding. Thus, by logical extension, a party may establish priority by use analogous to trademark use regardless of how the adverse party seeks to establish priority.
  • The earliest date of first use upon which applicant can rely in the absence of testimony or evidence is the filing date of its application.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • Applicant has not used its mark, 12TH BEAR. See Ringelstein dep. at 34 ("Q. Have you used the 12TH Bear designation on any product" A. No, sir – no, ma'am. Excuse me. Not on any product"). As a result, applicant must rely on its application's filing date (August 29, 2000) as its constructive use date. Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) ("[T]here can be no doubt but that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights"). See also Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985) ("The earliest date of first use upon which Intelsat can rely in the absence of testimony or evidence is the filing date of its application").
  • An applicant can establish acquired distinctiveness in an intent-to-use application where it can show that the "same mark" acquired distinctiveness for related goods or services, and that this acquired distinctiveness will transfer to the goods or services specified in the application when the mark is used in connection with them.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • In In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001), the Court made the following statement:
        "[A]n applicant can establish acquired distinctiveness in an intent-to-use application where it can show that [the] "same mark" acquired distinctiveness for related goods or services, and that this acquired distinctiveness will transfer to the goods or services specified in the application when the mark is used in connection with them. See TMEP § 1219.09(a) (1997) (listing cases)."
  • The legislative history of the Trademark Law Revision Act of 1988 (TLRA) demonstrates that achieving greater certainty in the acquisition of trademark rights by providing clear notice to third parties was a driving force behind the changes in the provisions of use and constructive use.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • The legislative history of the Trademark Law Revision Act of 1988 (TLRA) demonstrates that achieving greater certainty in the acquisition of trademark rights by providing clear notice to third parties was a driving force behind the changes in the provisions of use and constructive use.
  • The constructive use provision of §7(c) of the Lanham Act concerning intent-to-use applications.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • It is readily apparent that the constructive use provision of §7(c) of the Lanham Act, as amended, was intended to foster the filing of intent-to-use applications. By according conditional rights to those who publicly disclose their marks, constructive use encourages the early filing of applications and the searching of trademark records prior to the adoption of and investment in new marks. Constructive use provides an intent-to-use applicant a superior right over anyone adopting a mark after applicant's filing date (providing the applicant's mark is ultimately used and registered) and to prevent a third party from acquiring common law rights in a mark after the filing date of the intent-to-use application. Under this intent to use system, "token use" became unnecessary and inappropriate.
  • A mere token sale or shipment of the goods does not constitute "use" under the Trademark Act.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Thus, a mere token sale or shipment of the goods does not constitute "use" under the Trademark Act. See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994) [noting that the purpose of the Trademark Law Revision Act of 1988 was to eliminate "token use" as a basis for registration, and that the new, stricter standard contemplates instead commercial use of the type common to the particular industry in question]. H.R. Rep. No. 100-515, 100th Congress, 2d Sess.
  • Case Finding: Documentary evidence of two sales transactions to the same purchaser, approximately three months apart, fails to support a finding of prior and continuous use of the mark and by logical extension, opposer cannot rely on a predecessor in interest for asserting priority.
    • Westrex Corporation v. New Sensor Corporation, Opposition Nos. 91168152, 91170940, (TTAB 2007)
      • Even if issues may exist as to whether or not Chelmer Valve owned, and had the authority to assign, the GOLD LION mark (either as a distributor or manufacturer) to opposer, such issues are not material in this case. The documentary evidence of two sales transactions to the same purchaser, approximately three months apart, fails to support a finding of prior and continuous use of the GOLD LION mark by Chelmer Valve. By logical extension, opposer cannot rely on Chelmer Valve as a predecessor in interest for asserting priority over applicant.
  • In the case of an intent-to-use application, the owner of the famous mark must prove that its mark became famous prior to the filing date of the applicant's application.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007).
      • FOOTNOTE 64 "In the case of an intent-to-use application, the owner of the famous mark must prove that its mark became famous prior to the filing date of the applicant's application. Toro Co. v. ToroHead Inc., supra, 61 USPQ2d at 1180-1174…."
In re Promo Ink, Serial No. 76541018, (TTAB 2006) Grand Total
In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003) 1
In re Remacle, 66 USPQ2d 1222 (TTAB 2002) 1
In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) 1
Grand Total 3 3

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1126. International conventions

  1. (a) Register of marks communicated by international bureaus
    The Director shall keep a register of all marks communicated to him by the international bureaus provided for by the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair competition to which the United States is or may become a party, and upon the payment of the fees required by such conventions and the fees required in this chapter may place the marks so communicated upon such register. This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark. This register shall be a continuation of the register provided in section 1(a) of the Act of March 19, 1920.
  2. (b) Benefits of section to persons whose country of origin is party to convention or treaty
    Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter.
  3. (c) Prior registration in country of origin; country of origin defined
    No registration of a mark in the United States by a person described in subsection (b) of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.
    For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this section, the country of which he is a national.
  4. (d) Right of priority
    An application for registration of a mark under section 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section, filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That--
    1. (1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country;
    2. (2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce;
    3. (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection;
    4. (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.
    In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
  5. (e) Registration on principal or supplemental register; copy of foreign registration
    A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.
  6. (f) Domestic registration independent of foreign registration
    The registration of a mark under the provisions of subsections (c), (d), and (e) of this section by a person described in subsection (b) of this section shall be independent of the registration in the country of origin and the duration, validity, or transfer in the United States of such registration shall be governed by the provisions of this chapter.
  7. (g) Trade or commercial names of foreign nationals protected without registration
    Trade names or commercial names of persons described in subsection (b) of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.
  8. (h) Protection of foreign nationals against unfair competition
    Any person designated in subsection (b) of this section as entitled to the benefits and subject to the provisions of this chapter shall be entitled to effective protection against unfair competition, and the remedies provided in this chapter for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.
  9. (i) Citizens or residents of United States entitled to benefits of section
    Citizens or residents of the United States shall have the same benefits as are granted by this section to persons described in subsection (b) of this section.

 

 

Sec. 1141f. Effect of filing a request for extension of protection of an international registration to the United States

  1. (a) Requirement for request for extension of protection
    A request for extension of protection of an international registration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be deemed to be properly filed in the United States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.
  2. (b) Effect of proper filing
    Unless extension of protection is refused under section 1141h of this title, the proper filing of the request for extension of protection under subsection (a) of this section shall constitute constructive use of the mark, conferring the same rights as those specified in section 1057(c) of this title, as of the earliest of the following:
    1. (1) The international registration date, if the request for extension of protection was filed in the international application.
    2. (2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date.
    3. (3) The date of priority claimed pursuant to section 1141g of this title.

 

 

Sec. 2.34. Bases for filing.

  1. (a) The application must include one or more of the following five filing bases:
    1. (1) Use in commerce under section 1(a) of the Act. The requirements for an application based on section 1(a) of the Act are:
      1. (i) The trademark owner's verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement 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;
      2. (ii) The date of the applicant's first use of the mark anywhere on or in connection with the goods or services;
      3. (iii) The date of the applicant's first use of the mark in commerce as a trademark or service mark; and
      4. (iv) One specimen showing how the applicant actually uses the mark in commerce.
      5. (v) If more than one item of goods or services is specified in the application, the dates of use required in paragraphs (ii) and (iii) of this section need be for only one of the items specified in each class, provided that the particular item to which the dates apply is designated.
    2. (2) Intent-to-use under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had 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 filing date of the application.
    3. (3) Registration of a mark in a foreign applicant's country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
      1. (i) The applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had 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 filing date of the application.
      2. (ii) A true copy, a photocopy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. The certification or copy of the foreign registration must show the name of the owner, the mark, and the goods or services for which the mark is registered. If the foreign registration is not in the English language, the applicant must submit a translation.
      3. (iii) If the record indicates that the foreign registration will expire before the United States registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed and will be in force at the time the United States registration will issue. If the foreign registration is not in the English language, the applicant must submit a translation.
      (4) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
      1. (i) A claim of priority, filed within six months of the filing date of the foreign application. Before publication or registration on the Supplemental Register, the applicant must either:
        1. (A) Specify the filing date, serial number and country of the first regularly filed foreign application; or
        2. (B) State that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
      2. (ii) Include the applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had 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 filing date of the application.
      3. (iii) Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under section 1(a), section 1(b) or section 44(e) of the Act.
    4. (5) Extension of protection of an international registration under section 66(a) of the Act. In an application under section 66(a) of the Act, the international application or subsequent designation requesting an extension of protection to the United States must contain a signed declaration that meets the requirements of §2.33.
  2. (b)
    1. (1) In an application under section 1 or section 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. However, the applicant may not claim both sections 1(a) and 1(b) for the identical goods or services in the same application.
    2. (2) In an application under section 1 or section 44 of the Act, if an applicant claims more than one basis, the applicant must list each basis, followed by the goods or services to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated.
    3. (3) A basis under section 66(a) of the Act cannot be combined with any other basis.
  3. (c) The word "commerce" means commerce that Congress may lawfully regulate, as specified in section 45 of the Act.

 

 

C.F.R. Sec. 2.89. Extensions of time for filing a statement of use.

  1. (a) The applicant may request a six-month extension of time to file the statement of use required by §2.88. The extension request must be filed within six months of the date of issuance of the notice of allowance under section 13(b)(2) of the Act and must include the following:
    1. (1) A written request for an extension of time to file the statement of use;
    2. (2) The fee per class required by §2.6. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the extension request, or the request will be denied. If the applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning with the lowest numbered class(es), in ascending order. The Office will delete the goods/services in the remaining classes not covered by the fees submitted; and
    3. (3) A statement that the applicant still has a bona fide intention to use the mark in commerce, specifying the relevant goods or services, signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant ( see §2.193(e)(1)). If the verification is unsigned or signed by the wrong party, the applicant must submit a substitute verification within six months of the date of issuance of the notice of allowance.
  2. (b) Before the expiration of the previously granted extension of time, the applicant may request further six month extensions of time to file the statement of use by submitting the following:
    1. (1) A written request for an extension of time to file the statement of use;
    2. (2) The fee per class required by §2.6. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the extension request, or the request will be denied. If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant must specify the classes to be abandoned. If the applicant submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees, beginning with the lowest numbered class(es), in ascending order. The Office will delete the remaining goods/services not covered by the fees submitted;
    3. (3) A statement that the applicant still has a bona fide intention to use the mark in commerce, specifying the relevant goods or services, signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant ( see §2.193(e)(1)). If the verification is unsigned or signed by the wrong party, the applicant must submit a substitute verification before the expiration of the previously granted extension; and
    4. (4) A showing of good cause, as specified in paragraph (d) of this section.
  3. (c) Extensions of time under paragraph (b) of this section will be granted only in six-month increments and may not aggregate more than 24 months.
  4. (d) The showing of good cause must include a statement of the applicant's ongoing efforts to make use of the mark in commerce on or in connection with each of the relevant goods or services. Those efforts may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain governmental approval, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts to use the mark in commerce.
  5. (e)
    1. (1) At the time of the filing of a statement of use, or during any time remaining in the existing six-month period in which a statement of use is filed, applicant may file one request, in accordance with paragraph (a) or (b) of this section, for a six-month extension of time for filing a statement of use, provided that the time requested would not extend beyond 36 months from the issuance of the notice of allowance. Thereafter, applicant may not request any further extensions of time.
    2. (2) A request for an extension of time that is filed at the time of the filing of a statement of use, or during any time remaining in the existing six-month period in which a statement of use is filed, must comply with all the requirements of paragraph (a) of this section, if it is applicant's first extension request, or paragraph (b) of this section, if it is a second or subsequent extension request. However, in a request under paragraph (b) of this section, applicant may satisfy the requirement for a showing of good cause by asserting that applicant believes that it has made valid use of the mark in commerce, as evidenced by the submitted statement of use, but that if the statement of use is found by the Patent and Trademark Office to be fatally defective, applicant will need additional time in which to file a new statement of use.
  6. (f) The goods or services specified in a request for an extension of time for filing a statement of use must conform to those goods or services identified in the notice of allowance. Any goods or services specified in the notice of allowance which are omitted from the identification of goods or services in the request for extension of time will be presumed to be deleted and the applicant may not thereafter request that the deleted goods or services be reinserted in the application. If appropriate, an applicant may specify the goods or services by stating "those goods or services identified in the notice of allowance" or "those goods or services identified in the notice of allowance except * * *" followed by an identification of the goods or services to be deleted.
  7. (g) The applicant will be notified of the grant or denial of a request for an extension of time, and of the reasons for a denial. Failure to notify the applicant of the grant or denial of the request prior to the expiration of the existing period or requested extension does not relieve the applicant of the responsibility of timely filing a statement of use under §2.88. If, after denial of an extension request, there is time remaining in the existing six-month period for filing a statement of use, applicant may submit a substitute request for extension of time. Otherwise, the only recourse available after denial of a request for an extension of time is a petition to the Director in accordance with §2.66 or §2.146. A petition from the denial of an extension request must be filed within two months of the date of issuance of the denial of the request. If the petition is granted, the term of the requested six-month extension that was the subject of the petition will run from the date of expiration of the previously existing six-month period for filing a statement of use.
  8. (h) If the extension request is not filed within a reasonable time after it is signed, the Office may require a substitute verification or declaration under §2.20 stating that the applicant still has a bona fide intention to use the mark in commerce.