As stated in section 901 Use in Commerce of the Trademark Manual of Examination Procedure:

In an application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), the applicant must use the mark 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. §2.34(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. If the verification 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 et seq. regarding verification.

In an 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. Prior to registration, the applicant must actually 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 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) or §1126(e), as a second basis for filing. See TMEP §§806.02 et seq. regarding filing on 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 National 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 et seq. 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 TMEP §1613.

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  • Definition: Use in Commerce.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Trademark Act Section 45, 15 U.S.C. Section 1127, states in relevant part as follows: "[A] mark shall be deemed to be in use in commerce ... 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."
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007).
      • "Section 45 of the Lanham Act, 15 U.S.C. §1127, states, in part, that:
        ""For purposes of this Act, a mark shall be deemed to be in use in commerce – (1) on goods 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 . . .""
  • An applicant may not claim a Section 1(a) filing basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the Section 1(a) basis as of the application filing date.
    • Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007).
      • In this instance, the law is clear that an applicant may not claim a Section 1(a) filing basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the Section 1(a) basis as of the application filing date. 37 C.F.R. Section 2.34(a)(1)(i). Cf. E.I. du Pont de Nemours & Co. v. Sunlyra International, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • In a use-based application filed under Trademark Act Section 1(a), 15 U.S.C. §1051(a), registration is allowed only as to goods upon which the mark is being used as of the application filing date, and an opposition will be sustained as to any of the identified goods as to which it is shown that no use had been made as of the application filing date.7 FOOTNOTE 7 "Compare a fraud claim, which if proven would warrant sustaining the opposition as to all of the goods identified in the application, not just as to those goods which are the specific subject of the fraud claim. See, e.g., Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006). As discussed infra, we need not and do not reach opposer's unpleaded fraud claim in this case."
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • The application's identification of goods also includes "recipe books," in Class 16. However, there is no evidence in the record showing that applicant has ever used the mark on Class 16 "recipe books." There is evidence that, prior to the application filing date (in 1998 and 1999), applicant made four sales, via her website, of an item called "Barb's Virtual Cookbook." This item is described as follows on applicant's website: "Barb's Virtual Cookbook - We email it to you! And we have upgrades! We include sweet and savory breads, salad dressings, recipes for entrée's [sic] along with techniques such as how to cook fish flawlessly every time!" (Applicant's Exhibit No. 17). We find that this "virtual cookbook," which is delivered to purchasers via email and does not appear to exist or ever to have been produced in printed form, cannot be deemed to be a Class 16 "recipe book." We therefore sustain opposer's "non-use" ground of opposition as to the goods identified in the application as "recipe books."
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • Thus, applicant had ceased using the mark on newsletters in August 1995, more than six years prior to the filing date of applicant's use-based application. Based on this evidence, we find that applicant's mark was not in use in commerce on newsletters as of the filing date of the application. See, e.g., Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006)(mark not used in commerce on goods, where last sale of goods had occurred many years prior to application filing date).
  • Statements regarding the use of the mark on goods and services are certainly material to issuance of a registration covering such goods and services.
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Statements regarding the use of the mark on goods and services are certainly material to issuance of a registration covering such goods and services. First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) ("We find that applicant committed fraud in its statement regarding the use of the mark on goods for which it only intended to use the mark. There is no question that this statement was material to the approval of the application by the Examining Attorney.") See also Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (applicant's counterclaim petition to cancel granted because of fraud by opposer in procuring its pleaded registrations, specifically, fraud found because of misrepresentations regarding extent of use of the marks on the goods identified in the applications which resulted in issuance of opposer's pleaded registrations); General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990), aff'g General Rent-A-Car Inc. v. General Leaseways, Inc., Canc. No. 14,870 (TTAB May 2, 1988).
    • Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007).
      • Similarly, in this case there is no question that the application for registration under Section 1(a) of the Trademark Act would have been refused but for respondent's misrepresentation regarding its use of its mark on all the identified goods in the application. Respondent's contention that a registration would have issued nonetheless if the application listed only the limited description of women's clothing is irrelevant to our discussion. In this instance, the law is clear that an applicant may not claim a Section 1(a) filing basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the Section 1(a) basis as of the application filing date. 37 C.F.R. Section 2.34(a)(1)(i). See, e.g., First International Services Corp., supra, 5 USPQ2d at 1636.
  • Only the owner of a mark may file a use-based application under Trademark Act Section 1(a); if the filing entity is not the owner of the mark as of the filing date, the application is void ab initio.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • In a use-based application under Trademark Act Section 1(a), only the owner of the mark may file the application for registration of the mark; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio. See Trademark Act Section 1(a), 15 U.S.C. §1051(a); Trademark Rule 2.71(d), 37 C.F.R. §2.71(d). This statutory ownership requirement cannot be waived. Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988).
  • An application filed by the wrong entity, where both entities are in existence at the time of filing, is void ab initio.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Specifically, we find that this case in fact is a case such as that contemplated by the Board in the above-quoted language from Accu Personnel, i.e., it is "a case where two separate commercial enterprises are in existence on the application filing date, and the application is filed by the wrong one." In Accu Personnel, the four companies which merged after the filing date of the application to form the applicant corporation did not survive the merger as separate entities, so the four companies and the corporation were merely earlier and later manifestations of the same, single commercial entity. Likewise in Gaylord, because the earlier proprietorship had ceased to exist or function upon formation of the corporation, the proprietorship and the corporation were deemed to constitute a single, continuing entity.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • This case thus is more similar to those reported cases in which the application was found to be void ab initio because two entities were in existence as of the application filing date, and the application was filed by the wrong one. See, e.g., Huang v. Tzu Wei Chen Food Co. Ltd., supra (application filed by individual void where owner of mark was corporation with which individual was affiliated); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991)(application filed by corporation void where owner of mark was joint venture of which applicant corporation was member); and American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999)(intent-to-use application filed by individual void where the actual entity possessing the bona fide intention to use the mark was a partnership comprised of the individual and her husband).
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • In view thereof, and because there was no transfer of rights in the mark from the '410 corporation to the applicant '660 corporation prior to the application filing date, the owner of the mark and the proper applicant was the '410 corporation, not the '660 corporation. Again, this is not a case (such as Accu Personnel and Gaylord, upon which respondent relies) where there existed only one legal entity as of the filing date which was merely misidentified or misnamed in the application, a curable defect. Rather, there were two legal entities in existence, and the application was filed by the wrong one, a defect which cannot be cured and which renders the application void ab initio.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • For all of the reasons discussed above, we are not persuaded by respondent's contention that the applicant '660 corporation and the separate '410 corporation constituted a single continuing commercial enterprise which was in fact the owner of the mark as of the application filing date but which was merely misidentified in the application. As of the application filing date, the owner of the mark and thus the proper applicant for registration was the '410 corporation, not the separate and distinct '660 corporation. These two separate entities were in existence on the filing date, and the application simply was filed by the wrong one.
  • Case Finding: Later-formed entity not entitled to rely on earlier use of mark be earlier-formed entity where no intent to inure the benefit of the mark to the later-formed entity.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • The present case is particularly similar on its facts to Daltronics, Inc. v. H.L. Dalis, Inc., 158 USPQ 475 (TTAB 1968). In Daltronics, like in the Gaylord case relied on by respondent herein and discussed above, the issue was priority. The opposer, Daltronics, Inc., attempted to rely for priority purposes on the earlier use of a similar mark by another, earlier-formed corporation, Deltronics Inc., which opposer argued was a predecessor in interest to the later-formed Daltronics, Inc. The same individual was the president and sole stockholder of both corporations, and he treated both companies as his alter egos. However, there was no evidence that any transfer of assets or goodwill from the earlier corporation, Deltronics Inc., to the later formed corporation, Daltronics, Inc., had occurred upon the latter's formation. The Board held that the earlier corporation, Deltronics Inc., was not a predecessor in interest to the opposer, Daltronics, Inc., and that Daltronics, Inc. therefore was not entitled to rely on the earlier use of the mark by Deltronics Inc. The Board explained as follows:
        "However, these two companies had different legal existences, and when opposer was organized there was no transfer of any good will or rights in the mark or name. Opposer's president conceded that there was no transfer of assets; that he intentionally formed a new and different corporation to make a "clean start" rather than change the name which he knew he could do; and that he knowingly created a new and, in substance, a distinctly different legal entity. Although he treated these companies as his alter egos, we cannot conclude on the record before us that the use of "DELTRONICS" by the first corporation inured to the benefit of opposer." 158 USPQ at 479, n.2.
  • Definition: Related Company
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Trademark Act Section 5, in pertinent part, provides that "[w]here a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public." Trademark Act Section 45 in turn defines "related company" as follows: "The term ‘related company' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used."
  • To establish that an entity is a "related company," it must be shown that as of the trademark application filing date the applicant entity controlled the related company's use of the mark with respect to the nature and quality of the services rendered under the mark.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Pursuant to these provisions, to establish that the '410 corporation was a "related company" with respect to the applicant '660 corporation, respondent must show that as of the April 21, 1997 application filing date, the applicant '660 corporation (which was formed on March 12, 1997) controlled the '410 corporation's use of the mark with respect to the nature and quality of the services rendered under the mark. We find that no such showing has been made.
  • A common president, controlling shareholder, and common premises are not sufficient to establish that the entities are related companies.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Danny Matta was the president of both the '410 corporation and the '660 corporation. Although the record is far from clear on this point, it also appears that Mr. Matta was the controlling (although apparently not the sole) shareholder of both corporations. Finally, the record shows that the two corporations shared the same premises. However, it is settled that these points of commonality between two corporations do not suffice to make the corporations related companies under Trademark Act Section 5. See Beech Aircraft Corp. v. Lightning Aircraft Co. Inc., 1 USPQ2d 1290 (TTAB 1986); In re Raven Marine, Inc., 217 USPQ 68 (TTAB 1983); and L. & C. Hardtmuth, Inc. v. Fabrique Suisse de Crayons Caran D'Ache S.A., 123 USPQ 546 (TTAB 1959).
  • Control of both entities by a third entity is not sufficient to establish both companies as related companies.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • The mere fact that Mr. Matta may have controlled both corporations does not suffice to establish that the applicant '660 corporation, itself, controlled the '410 corporation's use of the mark.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • There is no evidence that Mr. Matta's control over the '410 corporation was exercised in his capacity as an officer of the applicant '660 corporation. See Raven Marine, Inc., supra;8 In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987)(mere fact that two sister corporations (one of which was the applicant for registration and the other of which was the user of the mark) are both controlled by a third corporation does not make the two sister corporations related companies under Section 5; no evidence that the applicant corporation itself controlled the user corporation's use of the mark); see also The Greyhound Corp. et al. v. Armour Life Insurance Co., 214 USPQ 473 (TTAB 1982).
  • Instructive case regarding the "single enterprise" theory.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Although the actual legal issues involved in Accu Personnel (the "personhood" of a yet-to-be formed corporation) and in Gaylord (Section 2(d) priority) are different from the Section 1(a) ownership issue involved in the present case, we deem the Board's discussion in both cases of the "single enterprise" theory to be instructive.
  • Applicant argued the "related company" theory in the alternative to the "single entity" theory.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Respondent's second theory, discussed in its brief somewhat in passing and presumably in the alternative to its "single entity" theory, appears to based on the "related company" provisions of Trademark Act Sections 5 and 45, 15 U.S.C. §§1055 and 1127. Although respondent's argument on this point is far from clear, we presume that respondent is contending that even if the '410 corporation and the applicant '660 corporation were two separate entities as of the April 21, 1997 application filing date, they nonetheless were related companies, such that the '410 corporation's use of the mark between the March 12, 1997 formation of the '660 corporation and the April 21, 1997 application filing date inured to the benefit of the applicant '660 corporation, thus entitling the '660 corporation to file the application as owner of the mark. We are not persuaded.
  • Case Finding: Equitably constituted single entity language is dicta.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • One other case upon which respondent relies requires discussion, i.e., In re Hand, 231 USPQ 487 (TTAB 1986). That case might be read to address both the "single entity" theory and the "related company" theory asserted by respondent herein. Respondent cites Hand for the Board's statement therein (which itself was based on language in Smith v. Coahoma Chemical Co. Inc., 264 F.2d 916, 121 USPQ 215 (CCPA 1959)) that "if facts were presented to show that an individual ownership of a corporation was so complete that the two legal entities ‘equitably constituted a single entity,' then sufficient control by the individual with use by the corporation inuring to the individual's benefit would be found." In re Hand, supra, 231 USPQ at 488. We find, however, that this "equitably constituted a single entity" language is dicta, and that it is inapposite to our case in any event.
  • Examples of use in commerce.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Examples of use of a service in commerce include when: (1) the recited services are rendered across state lines; and (2) customers travel across state lines in response to advertising for the recited services. See TMEP Section 1301.03(b) (4th ed. rev. 2004).
  • Use of the mark in connection with promotional, advertising or other activities undertaken prior to the actual rendering of the recited services does not constitute actual use in commerce.
    • Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007).
      • Use of the mark in connection with promotional, advertising or other activities undertaken prior to the actual rendering of the recited services does not constitute actual "use in commerce" of identified services sufficient to support the filing of a use-based application. See In re Port Authority of New York, 3 USPQ2d 1453 (TTAB 1987); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983).
  • Inaccurate claimed dates of first use do not, by themselves, constitute fraud.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 17 "We point out that inaccurate information regarding claimed dates of first use does not, by itself, constitute fraud. Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1141 (TTAB 1990) ("The Board repeatedly has held that the fact that a party has set forth an erroneous date of first use does not constitute fraud unless, inter alia, there was no valid use of the mark until after the filing of the [Section 1(a)] application")."
  • Trade name and service mark use evidence is sufficient to establish prior rights for an opposer or petitioner, but the registrant or applicant who has based its application on use must show, if challenged, that it used the trademark at least as early as the filing date for the goods or services in the application in order to be entitled to registration.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • We note that most of respondent's evidence of his use of the THE CRAFTSMAN, ALS IK KAN and woodworker's compass involves trade name use or service mark use.18 FOOTNOTE 18 "While this type of evidence is sufficient to establish prior rights for an opposer or petitioner, the registrant or applicant who has based its application on use must show, if challenged, that it used the mark at least as early as the filing date for the goods or services in the application in order to be entitled to registration. See e.g., Martahus, 27 USPQ2d at 1850 ("A trade name which also has significance as either a trademark or a service mark may be registered, whereas a trade name lacking any such significance may not")."
  • Proper use of a mark by a trademark owner's licensee or related company constitutes "use" of that mark attributable to the trademark owner.
    • Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407, (TTAB 2007).
      • A basic principle underpinning trademark law in the United States is use of a mark in commerce; and years of precedent make it very clear that proper use of a mark by a trademark owner's licensee or related company constitutes "use" of that mark attributable to the trademark owner.
  • A key factor is that the sale or sales made cannot be "token" in the sense that they are artificially made solely to reserve a right in a mark and not made as part of a usual product or service launch. Thus, even sales made in a test marketing program will probably suffice as a bona fide use of the mark in the ordinary course of trade because test market sales are a common harbinger of a proposed new product launch.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • "A key factor is that the sale or sales made cannot be "token" in the sense that they are artificially made solely to reserve a right in a mark and not made as part of a usual product or service launch. Thus, even sales made in a test marketing program will probably suffice as a bona fide use of the mark in the ordinary course of trade because test market sales are a common harbinger of a proposed new product launch." McCarthy On Trademarks And Unfair Competition §19:109 (4th ed. 2010).
  • Case Finding: Despite applicant's vigorous argument, we find that applicant failed to show that there was a per se violation of any law or FDA regulations. As previously indicated, we disagree with applicant's premise that the products sold by opposer to the military were required to be FDA approved before the sales of those products may constitute bona fide use of the mark in commerce.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Despite applicant's vigorous argument, we find that applicant failed to show that there was a per se violation of any law or FDA regulations. As previously indicated, we disagree with applicant's premise that the products sold by opposer to the military were required to be FDA approved before the sales of those products may constitute bona fide use of the mark in commerce.
  • Case Finding: The record clearly establishes that opposer is the successor-in-interest.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • The record clearly establishes that opposer is the successor-in-interest to Sekos, Inc. for the technology regarding SAVe portable generators and that the SAVe trademark was used only by opposer. It is further clear from the record that Dr. Wiesman has been the central figure of what can be characterized as a number of research and development projects that are ultimately marketed by separate entities. Even if the SAVe mark was used by Sekos, Inc. and then subsequently used by opposer, the mark points to a single source: that is, the use of the SAVe mark was for the benefit of and inured to the benefit of Dr. Wiesman through his conglomerate, including Sekos, Inc. and opposer. See Airport Canteen Services, Inv. v. Farmer's Daughter, Inc., 184 USPQ 622, 627 (TTAB 1974).
  • Case Finding: We disagree with applicant's premise that the products sold by opposer to the military were required to be FDA approved before the sales of those product may constitute bona fide use of the mark in commerce.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • We disagree with applicant's premise that the products sold by opposer to the military were required to be FDA approved before the sales of those product may constitute bona fide use of the mark in commerce.
  • Determining whether the use of a mark is lawful under one or more of the myriad of regulatory acts involves two questions: (1) whether a court or government agency having competent jurisdiction under the statute involved has previously determined that party is not in compliance with the relevant statute; or (2) whether there is a per se violation of a statute regulating the sale of a party's goods.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Determining whether the use of a mark is lawful under one or more of the myriad of regulatory acts involves two questions: (1) whether a court or government agency having competent jurisdiction under the statute involved has previously determined that party is not in compliance with the relevant statute; or (2) whether there is a per se violation of a statute regulating the sale of a party's goods. General Mills Inc. v. Healthy Valley Foods, 24 USPQ2d 1270, 1273 (TTAB 1992).
  • If the sales at issue were made for legitimate marketing or other commercially reasonable reasons in the ordinary course of trade, then the sales constitute bona fide use of the mark in commerce.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Thus, the issue we must decide is whether opposer's April 2005 and August 2006 sales were test sales for legitimate commercial purposes in the ordinary course of trade or token sales to reserve the mark for registration. If the sales at issue were made for legitimate marketing or other commercially reasonable reasons in the ordinary course of trade (i.e., genuine use of the mark), then we must find that the sales constitute bona fide use of the mark in commerce.
  • It is incumbent upon the party charging that the use was unlawful to demonstrate by clear and convincing evidence more than that the use in question was not in compliance with applicable law. Such party must prove also that the non-compliance was material, that is, was of such gravity and significance that the usage must be considered unlawful – so tainted that, as a matter of law, it could create no trademark rights -- warranting cancellation of the registration of the mark involved.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • "[I]t is incumbent upon the party charging that the use was unlawful to demonstrate by clear and convincing evidence more than that the use in question was not in compliance with applicable law. Such party must prove also that the non-compliance was material, that is, was of such gravity and significance that the usage must be considered unlawful – so tainted that, as a matter of law, it could create no trademark rights -- warranting cancellation of the registration of the mark involved." General Mills Inc. v. Healthy Valley Foods, 24 USPQ2d at 1274.
  • Opposer's use of the mark in units sold for product testing may establish a bona fide commercial use sufficient to support priority.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Opposer's use of the mark in units sold for product testing is not a bona fide commercial use sufficient to support priority. We disagree with applicant's argument. We find that opposer's sales of its products to the military were an arm's length transaction in which properly labeled SAVe ventilators, albeit for testing and not human use, were sold and transported in commerce. Based on the nature of the products at issue and the evidence of record in this case, the fact that the products were sold and transported to the customer for testing does not make the sale and transportation of those products any less legitimate.
  • Oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Opposer's testimony regarding its April 2005 sale is not corroborated by any documentary evidence.47 However, "oral testimony, if sufficiently probative, is normally satisfactory to establish priority of use in a trademark proceeding." Powermatics, Inc. v. Globe Roofing Products Co., Inc., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 965).
  • Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "use in commerce" as the "bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark."
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "use in commerce" as the "bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark."
  • Test marketing has been recognized as sufficient to establish use of a mark.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • We also note that test marketing has been recognized as sufficient to establish use of a mark. See Game Power Headquarters Inc. v. Owens, 37 USPQ2d 1427, 1431 (E.D. Pa. 1995) ("Test marketing of the service mark, "Game Power Headquarters", constitutes a bona fide use in commerce . . . Sales of goods under a brand name in test marketing area are actual sales from which rights in a mark can accrue"); see also E.I. du Pont de Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807, 812 (TTAB 1987) ("[s]ales of goods under a brand name in a test marketing area are actual sales from which rights in a mark can accrue"); cf. Paramount Pictures Corp. v. White, 31 USPQ2d at 1769 n. 9 (the use at issue was not genuine trademark use, it was de minimis and noncommercial in nature and not made in the ordinary course of trade in games).
  • The committee intends that the revised definition of "use in commerce" be interpreted to mean commercial use which is typical in a particular industry and should be interpreted with flexibility so as to encompass various genuine, but less traditional, trademark uses..
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • "In this regard and apropos to the facts in this case, the legislative history of the 1988 Revision Act references a "company's shipment to clinical investigators during the Federal approval process" as being in the ordinary course of trade.37 The Senate Judiciary Committee Report made the following comment: ""The committee intends that the revised definition of "use in commerce" be interpreted to mean commercial use which is typical in a particular industry. Additionally, the definition should be interpreted with flexibility 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, and to preserve ownership rights in a mark if, absent an intent to abandon, use of a mark is interrupted due to special circumstances."" S. Rep. No. 100-515, p. 44-45 (September 15, 1988)."
  • The fact that these initial sales to the military were mutually beneficial in that they allowed the military to test the initial units before committing to a larger purchase, and they permitted opposer to refine the product to make it commercially attractive so the military would purchase a significant number of units, supports the legitimate commercial basis for the sales.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • The fact that these initial sales to the military were mutually beneficial in that they allowed the military to test the initial units before committing to a larger purchase, and they permitted opposer to refine the product to make it commercially attractive so the military would purchase a significant number of units, supports the legitimate commercial basis for the sales.
  • The issue in all the abovereferenced cases was whether there was genuine use of the mark in commerce.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • The issue in all the abovereferenced cases was whether there was genuine use of the mark in commerce.
  • The TTAB has held that bona fide test marketing and experimental sales in small volumes are sufficient to show use of a mark.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • The Board has held that bona fide test marketing and experimental sales in small volumes are sufficient to show use of a mark. E.I. du Pont de Nemours and Co. v. Big Bear Stores, Inc., 161 USPQ 50, 51 (TTAB 1969) (test marketing of the mark SUPER SHIELD for a premium exterior clear finish proved unsatisfactory and plaintiff assigned the mark to another product considered near in quality but lower in price).
  • There must be some nexus between the use of the mark and the alleged violation before the unlawfulness of a shipment can be said to result in the invalidity of a registration.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Furthermore, "there must be some nexus between the use of the mark and the alleged violation before the unlawfulness of a shipment can be said to result in the invalidity of a registration." Id. citing Satinine Societa v. P.A.B. Produits, 209 USPQ 958, 967 (TTAB 1981).
  • Use in commerce should be interpreted with flexibility to account for different industry practices.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • "Use in commerce should be interpreted with flexibility to account for different industry practices. ""The legislative history of the Trademark Law Revision Act reveals that the purpose of the amendment 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."" Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 (TTAB 1994), aff'd, White v. Paramount Pictures Corp., 108 F.3d 1392 (Fed. Cir. 1997) (non-precedential)."
  • Where the TTAB finds that opposer has made bona fide sales in the ordinary course of trade, the TTAB does not have to determine whether opposer's use constitutes use analogous to trademark use.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Because we have found that opposer has made bona fide sales in the ordinary course of trade, we do not have to determine whether opposer's use constitutes use analogous to trademark use.
  • Whether private product testing constitutes typical commercial use is a fact that we may consider in determining whether opposer's sales were for a legitimate, commercial reason in the ordinary course of trade, but it is not the test in and of itself.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • Opposer has not proven that private product testing is typical commercial use in connection with medical devices. This argument misses the point. As indicated above, the issue is whether opposer's sales for "private product testing" were for a legitimate, commercial reason in the ordinary course of trade and not merely to reserve the right to register the mark. Whether private product testing constitutes typical commercial use in connection with medical devices is a fact that we may consider in determining whether opposer's sales were for a legitimate, commercial reason in the ordinary course of trade, but it is not the test in and of itself.
  • While oral testimony is strengthened by corroborative documentary evidence, oral testimony alone that is consistent, definite and without contradictions may be sufficiently probative.
    • Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010)
      • While oral testimony is strengthened by corroborative documentary evidence, oral testimony alone that is consistent, definite and without contradictions may be sufficiently probative. B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236 (CCPA 1945).
  • It has been the consistent position of the TTAB and the USPTO that a bona fide use of a mark in commerce means a lawful use in commerce.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Moreover, it has been the consistent position of the Board and the USPTO that a bona fide use of a mark in commerce means a "lawful use in commerce." See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 fn. 2 (TTAB 1993); and The Clorox Company v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982).
  • Because the permanent injunction enjoins applicant from making the use required to obtain its federal trademark registration, applicant cannot make lawful use of its mark in commerce. Therefore, it is a legal impossibility for applicant to have a bona fide intent to use its mark in commerce.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Because the permanent injunction enjoins applicant from making the use required to obtain its federal trademark registration, as a matter of law, applicant cannot make lawful use of its mark in commerce. Therefore, it is a legal impossibility for applicant to have a bona fide intent to use its mark in commerce.
  • A trademark is used in commerce when the mark is placed in any manner on the goods or their containers or the displays associated therewith or on 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 the goods are sold or transported in commerce.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • A trademark is used in commerce when the mark "is placed in any manner on the goods or their containers or the displays associated therewith or on 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 the goods are sold or transported in commerce." Trademark Act Section 45.
Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (TTAB 2010) The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007) Hachette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, (TTAB 2007) Hurley International LLC v. Paul and Joanne Volta, Opposition No. 91158304, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Sinclair Oil Corporation v. Sumatra Kendrick, Opposition No. 91152940, (TTAB 2007) Grand Total
Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006) 1
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) 2
American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999) 1
Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) 1
E.I. du Pont de Nemours & Co. v. Sunlyra International Inc., 35 USPQ2d 1787 (TTAB 1995) 1
Game Power Headquarters Inc. v. Owens, 37 USPQ2d 1427 (E.D. Pa. 1995) 1
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) 1
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993) 1
In re Midwest Tennis & Track Co., 29 USPQ2d 1386 (TTAB 1993) 1
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992) 1
In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991) 1
Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137 (TTAB 1990) 1
General Car and Truck Leasing Systems Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398 (S.D. Fla. 1990) 1
First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) 1
General Rent-A-Car Inc. v. General Leaseways Inc., Canc. No. 14,870 (TTAB May 2, 1988) 1
Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) 1
In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987) 1
In re Port Authority of New York, 3 USPQ2d 1453 (TTAB 1987) 1
E.I. du Pont de Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807  (TTAB 1987) 1
Beech Aircraft Corp. v. Lightning Aircraft Co. Inc., 1 USPQ2d 1290 (TTAB 1986) 1
In re Hand, 231 USPQ 487 (TTAB 1986) 1
In re Cedar Point Inc., 220 USPQ 533 (TTAB 1983) 1
In re Raven Marine Inc., 217 USPQ 68 (TTAB 1983) 1
The Greyhound Corp. et al. v. Armour Life Insurance Co., 214 USPQ 473 (TTAB 1982) 1
The Clorox Company v. Armour-Dial, Inc., 214 USPQ 850 (TTAB 1982) 1
Satinine Societa v. P.A.B. Produits, 209 USPQ 958 (TTAB 1981) 1
Airport Canteen Services, Inv. v. Farmer's Daughter, Inc., 184 USPQ 622 (TTAB 1974) 1
E.I. du Pont de Nemours and Co. v. Big Bear Stores, Inc., 161 USPQ 50 (TTAB 1969) 1
Daltronics Inc. v. H.L. Dalis Inc., 158 USPQ 475 (TTAB 1968) 1
Powermatics Inc. v. Glebe Roofing Products Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965) 1
Gaylord Bros., Inc. v. Strobel Products Co., 140 USPQ2d 72 (TTAB 1963) 1
L. & C. Hardtmuth Inc. v. Fabrique Suisse de Crayons Caran D'Ache S.A., 123 USPQ 546 (TTAB 1959) 1
Smith v. Coahoma Chemical Co. Inc., 264 F.2d 916, 121 USPQ 215 (CCPA 1959) 1
B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232 (CCPA 1945) 1
Grand Total 9 2 2 13 4 1 2 2 35

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
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. (1) on goods when--
      1. (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
      2. (B) the goods are sold or transported in commerce, and
    2. (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.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (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. (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.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

 

 

C.F.R. Sec. 2.20. Declarations in lieu of oaths.

  1. Instead of an oath, affidavit, verification, or sworn statement, the language of 28 U.S.C. 1746, or the following language, may be used:

    The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

C.F.R. 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.