BitLaw

1304.02(a)(i)    Use in Commerce – §1(a)

Registration of a collective membership mark under §1(a) is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by its members. See In re Triangle Club of Princeton Univ., 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members).

Under 15 U.S.C. §§1051(a), 1054, and 37 C.F.R. §2.44(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

• (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members (37 C.F.R. §2.44(a)(4)(i)(A) );
• (2) Specify the date of the applicant’s members’ first use of the mark anywhere to indicate membership in the collective organization (37 C.F.R. §2.44(a)(4)(i)(B) );
• (3) Specify the date of the applicant’s members’ first use of the mark in commerce (37 C.F.R. §2.44(a)(4)(i)(B) );
• (4) Submit one specimen for each class, showing how a member uses the mark in commerce (37 C.F.R. §§2.44(a)(4)(i)(C), 2.56(b)(3) ); and
• (5) Submit a verified statement that the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising 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 collective membership organization of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s members; and that the facts set forth in the application are true (15 U.S.C. §§1051(a)(3)(C), 1054; 37 C.F.R. §2.44(a)(4)(i)(D)). See TMEP § 1304.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a) of the Trademark Act.

The Trademark Act defines "commerce" as commerce that may lawfully be regulated by Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; see TMEP §§901–901.04.

An applicant may not assert both §1(a) and §1(b) for the same collective membership organization in the same application. 37 C.F.R. §2.44(c); see TMEP §806.02(b).

Nothing in the Trademark Act prohibits the use of the same mark as a collective membership mark by members and, also, as a trademark or service mark by the parent organization ( see TMEP §1303.01), but the same mark may not be used both as a collective membership mark and as a certification mark. 37 C.F.R. §2.45(f); TMEP § 1306.04(f).