TRADEMARK WARNING: MAKE SURE YOU HAVE A BASIS TO FILE

Section 806.1(a) of the Trademark Examination Manual of Procedures makes “clear” that actual use of the mark in commerce is required at the date of filing for the goods or services subject of the application. Falsely claiming to have used the mark may subject the applicant to a claim of fraud.

But almost all applications claim coverage for the mark for multiple goods and services. This could be a group of tools or collection of differing types of clothing. Must the applicant be required to document use of the mark in conjunction of each category, e.g., hats, belts, shirts, skirts, pants, jackets, sweaters and vests? Or should the applicant forgo a detailed listing of products for a general category of “clothing”? The law does require a specimen demonstrating use of the mark for each classification of goods or services.

Note the above problem is not faced by an applicant filing for a mark under an intent to use category, 15 U.S.C. §1051(b). From my experience, the examiner will require a demonstration of use of the mark with a minimal example of goods within a classification.