T.M.E.P. § 804.02
Averments Required in Verification of Application for Registration - ¤1 or ¤44 Application

Executive summary:

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804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application

The requirements for the verified statement in applications under application 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), 1051(b)(3) and 1126, and 37 C.F.R. §§2.33 and 2.34. 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 §804.06 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 verifier'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 verifier's] own knowledge are true, and all statements made on information and belief are believed to be true" satisfies this requirement.

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 on or in connection with the goods or services listed in the application. If the verification is not filed with the original application, the verified statement must allege that the mark was in use in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. 2.34(a)(1)(i).

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 on or in connection with the goods or services listed in the application. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2) and 1126(e). If the verification is not filed with the original application, the verified statement must allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii).

Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. 15 U.S.C. 1051(a)(3)(A); 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 to be entitled to use the mark in commerce and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. See 15 U.S.C. 1051(b)(3)(A); 37 C.F.R. 2.33(b)(2).

While the correct language for an application filed under §1(b) or §44 is "entitled to use," if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the Office will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.

Concurrent Use. The verification for concurrent use should be modified to indicate an exception, that no one else except as specified in the application has the right to use the mark. 15 U.S.C. 1051(a)(3)(D). See TMEP §§1207.04 et seq. 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 et seq. regarding use by related companies.

Affirmative, Unequivocal Averments Required

The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements to the effect that "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..." 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.