The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3), and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), (b)(3), 1126, and 37 C.F.R. §§2.33 and 2.34. See In re Brack, 114 USPQ2d 1338, 1342 (TTAB 2015) (holding signature and verification of the averments in application is a requirement for establishing a basis). These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §804.05 regarding the requirements for verification of a §66(a) application.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that "to the best of the signatory's knowledge and belief, the facts recited in the application are accurate." The language in 37 C.F.R. §2.20 that "all statements made of [the signatory's] own knowledge are true and all statements made on information and belief are believed to be true" satisfies this requirement. See 37 C.F.R. §2.33(b)(1), (b)(2).
Use in Commerce. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce. 37 C.F.R. §2.34(a)(1)(i). If this verified statement is not filed with the original application, it must also allege that the mark was in use in commerce as of the application filing date. Id.
Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e); 37 C.F.R. §2.34(a)(2), (a)(3)(i), (a)(4)(ii). If this verified statement is not filed with the original application, it must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(2), (a)(3)(i), (a)(4)(ii).
Ownership or Bona Fide Intent and Entitlement to Use. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark and that to the best of the signatory’s knowledge and belief, no other person has 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 person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(a)(3)(A), (a)(3)(D); 37 C.F.R. §2.33(b)(1).
In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant is entitled to, and has a bona fide intent to, use the mark in commerce on or in connection with the goods or services specified in the application, and that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, used on or in connection with the goods or services of such other person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(b)(3)(A), (b)(3)(D); 37 C.F.R. §2.33(b)(2); see 15 U.S.C. §1126(d), (e). However, if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the USPTO will accept the verification, and will not require a substitute verification with the proper wording.
Concurrent Use. The verification for concurrent use should be modified to indicate an exception; i.e., that no other person except as specified in the application has the right to use the mark in commerce. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.33(f). See TMEP §1207.04 regarding concurrent use registration.
Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See TMEP §§1201.03–1201.03(e) regarding use by related companies.
Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as "the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce . . .," or wording that disavows the substance of the declaration, are unacceptable.
Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
See TMEP §1303.01(b)(i), §1304.02(b)(i), and §1306.02(b)(i) for averments required in a verification for a §1 or §44 application for a collective or certification mark.
Documents Must Be Filed Within a Reasonable Time After Execution
All applications, written statements, and documents that require a signature or signed declaration must be filed within a reasonable time after their execution. For example, under 37 C.F.R. §2.33(c), if the verified statement supporting an application for registration is not filed within a reasonable time after it is signed, the USPTO will require the applicant to submit a substitute verification or declaration under 37 C.F.R. §2.20 attesting that the mark was in use in commerce as of the application filing date, or that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. Re-execution is also required where 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) ) or request for extension of time to file a statement of use is not filed within a reasonable time after the date of execution. 37 C.F.R. §§2.76(g), 2.88(g), 2.89(h); TMEP §§1104.10(b)(ii), 1108.02(b), 1109.11(c).
The USPTO considers one year between execution and filing as reasonable for all applications, written statements, and documents that require a signature or signed declaration. The USPTO will not require a new declaration if the document is filed within one year of execution. If an application, allegation of use, or request for extension of time to file a statement of use is filed more than one year after its execution, the examining attorney will require that the applicant submit re-executed documents, or a statement, verified or supported by a declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.33(c), 2.76(g), 2.88(g), 2.89(h); TMEP §§1104.10(b)(ii), 1108.02(b), 1109.11(c).
Documents May Not Be Filed Before They Are Executed
If an applicant files an application that is signed and lists a date of execution that is subsequent to the application filing date, the examining attorney will inquire as to the actual date on which the application was signed. If it is not otherwise necessary to issue an Office action, the examining attorney may attempt to contact the applicant by phone or email to ascertain the date of signature, which may then be entered by examiner’s amendment. If the examining attorney is unable to reach the applicant, the examining attorney must issue an Office action requiring the applicant to specify the date of signing.
When an application is executed in a foreign country located across the International Date Line, the fact that an application shows a date of execution as of the day after the application filing date is not inconsistent with its having been executed before filing. No inquiry is required in this limited situation.
The term verified statement, and the terms verify, verified, or verification as used in this part refers to a statement that is sworn to, made under oath or in an affidavit, or supported by a declaration under § 2.20 or 28 U.S.C. 1746, and signed in accordance with the requirements of § 2.193.
Documents filed in connection with a trademark application or registration must be signed as specified in paragraphs (e)(1) through (9) of this section:
The Trademark Act does not specify the appropriate person to verify facts on behalf of an applicant. The definition of a "person properly authorized to sign on behalf of the [applicant]" is set forth in 37 C.F.R. §2.193(e)(1). This definition applies to applications for registration, amendments to allege use, statements of use, requests for extensions of time to file statements of use, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits of incontestability under 15 U.S.C. §1065, and combined filings under 15 U.S.C. §§1058 and 1059. 37 C.F.R. §§2.2(n), 2.33(a), 2.76(b)(1), 2.88(b)(1), 2.89(a)(3), (b)(3), 2.161(b), 2.167(a). It also applies to declarations supporting amendments to dates of use, use of substitute specimens, claims of acquired distinctiveness under 15 U.S.C. §1052(f), amendments changing the basis for filing, and requests for amendment or correction of registrations under 15 U.S.C. §1057. 37 C.F.R. §2.193(e)(1).
The USPTO presumes that the verification or declaration is properly signed. Thus, the USPTO does not question the authority of the person who signs a verification unless the record or other evidence calls into question the signatory’s authority to sign. In view of the broad definition of a "person properly authorized to sign on behalf of the [applicant]" in 37 C.F.R. §2.193(e)(1), the fact that an application is signed by someone whose title refers to a different entity is not considered an inconsistency that warrants an inquiry as to whether the verification was properly signed.
Example: If an application is filed by "ABC Company, Inc.," and the verification is signed by an officer of "XYZ Company, Inc.," the USPTO will presume that XYZ Company, Inc. is a related company and that the signatory is properly authorized to sign on behalf of ABC Company, Inc.
The signatory must set forth his or her first and last name and the title or position of the person who signs the document immediately below or adjacent to the signature. 37 C.F.R. §2.193(d).
If the person signing the verification is identified as a different person than the individual named as the applicant, or as representing a different legal entity than the juristic applicant, the USPTO generally will not question whether the proper party is listed as the applicant.
Example: If the applicant is identified as Mary Smith, an individual citizen of the United States, and the application is signed by John Smith, the USPTO will not question whether the proper party is listed as applicant.
Example: If the applicant is John Smith, an individual citizen of the United States, and the application is signed by John Smith, President, XYZ, Inc., the USPTO will not question whether the proper party is listed as applicant.
If a qualified U.S. attorney signs a verification on behalf of an applicant, the USPTO will not require a power of attorney or other documentation stating that the attorney is authorized to sign.
This policy applies to both individual applicants and juristic applicants.
The broad definition of a "person properly authorized to sign on behalf of the [applicant]" in 37 C.F.R. §2.193(e)(1) applies only to a verified statement of facts by the applicant. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, requests for express abandonment, or changes to the correspondence address. 37 C.F.R. §§2.193(e)(2), (e)(3), (e)(9).
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is not necessarily entitled to sign responses to Office actions, or to authorize examiner’s amendments and priority actions. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to an examining attorney’s requirement or refusal of registration all constitute examples of representation of the applicant in a trademark matter. See 37 C.F.R. §11.5(b)(2). Under 5 U.S.C. §500(d) and 37 C.F.R. §11.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See TMEP §§611.03(b), 611.06, and 712–712.03 regarding signatures on responses to Office actions.
The signatory must personally sign or enter his or her name. 37 C.F.R. §§2.193(a)(1), (c)(1). It is unacceptable for a person to sign another person’s name to a verification pursuant to a general power of attorney. See In re Cowan, 18 USPQ2d 1407, 1409 (Comm’r Pats. 1990). In a TEAS submission, the person whose name is affixed to the verification must manually enter the elements of the electronic signature. 37 C.F.R. §2.193(c)(1). The rules do not provide authority for an attorney to sign another person's declaration. In re Dermahose, 82 USPQ2d 1793, 1796 (TTAB 2007) .
The name and title or position of the person who signs a document submitted in connection with an application must be set forth immediately below or adjacent to the signature. 37 C.F.R. §2.193(d). If the signatory’s name and/or title or position is not set forth in a document, the USPTO may require that it be stated for the record. This information can be entered through a Note to the File.
See TMEP §611.02regarding a verification signature versus a submission signature, §611.03(a) regarding the proper person to sign a verification, and §804.05 regarding verification of §66(a) applications.
In trademark and service mark applications under §66(a) of the Act, the request for extension of protection to the United States must include a declaration alleging that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §2.33(e)(1). In addition, the declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder, the signatory believes the applicant/holder to be entitled to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation, and to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. §1141(f)(a); 37 C.F.R. §2.33(e)(2) -(4). The declaration must be signed by: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) a qualified practitioner who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. 37 C.F.R. §2.193(e)(1).
The verified statement in a §66(a) application for a trademark or service mark is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should generally not issue any inquiry regarding the verification of the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.
See TMEP §1904.02(d) for information regarding the verified statement for a §66(a) application for a collective trademark, collective service mark, collective membership mark, or certification mark.
See also TMEP §1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, §1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and §1306.02(b)(ii) for declarations in §66(a) applications for certification marks.
An application for a trademark or service mark must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 37 C.F.R. §2.32(a)(6). See TMEP §1402 for further information about identifying goods and services in a trademark or service mark application.
The applicant should designate the international class number(s) that are appropriate for the identified goods or services, if this information is known. 37 C.F.R. §2.32(a)(7). See TMEP §1401 for more information about classification in a trademark or service mark application.
See also TMEP §1303.01 for information about identification and classification for collective trademark and collective service mark applications, §§1304.02(c)–1304.02(d) for collective membership mark applications, and §1306.02 for certification mark applications.
A filing basis is the statutory basis for filing an application for registration of a mark in the United States. An applicant must specify and meet the requirements of one or more bases in a trademark or service mark application. 37 C.F.R. §2.32(a)(5). However, omission of a specified filing basis will not prevent receipt of a filing date. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009).
There are five filing bases: (1) use of a mark in commerce under §1(a) of the Trademark Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States, under §66(a) of the Act. See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §2.34(a).
If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.
In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.
See 37 C.F.R. §2.34 and TMEP §806.01–(e) for a list of the requirements for each basis for trademark or service mark applications. See also 37 C.F.R. §§2.44(a)(4) and 2.45(a)(4), and TMEP §1303.01(a)(i)-(v), §1304.02(a)(i)-(v), and §1306.02(a)(i)-(v), for the requirements for each basis for collective and certification mark applications.
The requirements for establishing a basis for trademark or service mark applications are set forth in TMEP §§806.01(a)-806.01(e).
Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:
The Trademark Act defines "commerce" as commerce which 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 claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application. 37 C.F.R. §2.34(b); TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. See 37 C.F.R. §§2.2(k)(1), 2.34(a)(1)(i); cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995) .
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).
See TMEP §1303.01(a)(i)-(a)(i)(C), §1304.02(a)(i)-(a)(i)(C), and §1306.02(a)(i)-(a)(i)(B) for the requirements for a §1(a) basis for collective and certification mark applications.
In a trademark or service mark application based on 15 U.S.C. §1051(b) and 37 C.F.R. §2.34(a)(2), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.2(l), 2.34(a)(2). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §§2.2(l), 2.34(a)(2).
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 the mark is in use 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 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 §1303.01(a)(ii), §1304.02(a)(ii), and §1306.02(a)(ii) for the requirements for a §1(b) basis for collective and certification mark applications.
See also TMEP Chapter 1100 for additional information about intent-to-use applications.
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date for a U.S. trademark or service mark application based on a previously filed foreign application are:
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §2.35(b)(3), (b)(4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis, and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.
See TMEP §1303.01(a)(iii), §1304.02(a)(iii), and §1306.02(a)(iii) for the requirements for a §44(d) basis for collective and certification mark applications. See also TMEP §§1003–1003.08 for further information about §44(d) applications.
