TMEP 1306.02(a)(ii): Intent to Use – §1(b)

October 2017 Edition of the TMEP

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1306.02(a)(ii)    Intent to Use – §1(b)

Under 15 U.S.C. §§1051(b), 1054, and 37 C.F.R. §2.45(a)(4)(ii), to establish a basis under §1(b) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(ii)(A) );
  • (2) Submit a statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant (37 C.F.R. §2.45(a)(4)(ii)(B) ); and
  • (3) 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 authorized users, 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. §2.45(a)(4)(ii)(C); see 15 U.S.C. §§1051(b)(3)(B), 1054). See TMEP §1306.02(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) )  that 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, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class. See 37 C.F.R. §§2.76, 2.88. 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 of 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 §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.

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