TMEP 1303.01(a)(ii): Intent to Use – §1(b)

October 2017 Edition of the TMEP

Previous: §1303.01(a)(i)(C) | Next: §1303.01(a)(iii)

1303.01(a)(ii)    Intent to Use – §1(b)

In an application based on intent to use, the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §2.44(a)(4)(ii); see 15 U.S.C. §§1051(b)(3)(B), 1054. See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(b) of the Trademark Act.

Prior to registration, the applicant must 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), which states that (a) the mark is in use in commerce and (b) the applicant is exercising legitimate control over the use of the mark in commerce, and includes dates of use, the filing fee for each class, and one specimen evidencing use of the mark for each class. See 37 C.F.R. §§2.76(b), 2.88(b). See 37 C.F.R. §2.76 and TMEP §§1104–1104.11 regarding amendments to allege use and 37 C.F.R. §2.88 and TMEP §§1109–1109.18 regarding statements of use.

Once an applicant claims a §1(b) basis for any or all the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).

See TMEP Chapter 1100 for additional information about intent-to-use applications.