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Trademark Terms - U

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• Uncontrolled Licensing
• United States

• Use-Based Application
• Use in Commerce

Uncontrolled Licensing: A trademark owner has the duty to control the nature and quality of goods sold under his mark. When a trademark is licensed to another party, the licensor must exercise quality control of the goods produced. If the licensor fails to control quality, the mark may lose significance as an indication of origin and be found to have been abandoned.

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United States: The United States includes all territory which is under its jurisdiction and control.

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Use-Based Application: There are 4 filing bases on which an application may be based. One filing basis is use of the mark in commerce (the other three are filing based on an intent-to-use the mark in commerce, filing based on a pending foreign application, and filing based on a foreign registration). Applicants who file based on use in commerce must be using the mark they wish to register with the goods or services in the application prior to or at the time of filing the application.

To base the application on the applicant’s use of the mark in commerce, the applicant must submit the following four items: (1) A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date; (2) The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services; (3) The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and (4) One specimen for each class showing how the applicant actually uses the mark in commerce. If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date. These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

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Use in Commerce: For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use.

A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce. 

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