TMEP 1303.01(b)(i): Statements Required in Verification of Application for Registration - §1 or §44 Application

This is the October 2015 Edition of the TMEP

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1303.01(b)(i)    Statements Required in Verification of Application for Registration - §1 or §44 Application

The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in 37 C.F.R. §2.44(a)(4)(i)-(iv). See 15 U.S.C. §§1051(a)(3), 1051(b)(3), 1054, 1126. 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 §1303.01(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1303.01(a)-(a)(iv) for further information regarding filing-basis requirements, including the verified statement.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), 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 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. §2.44(a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B).

Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(a)(4)(i)(D). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).

Bona Fide Intention and Entitlement to Exercise Legitimate Control. 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, and is entitled, to exercise legitimate control over the use of the mark in commerce, and that to the best of the signatory’s knowledge and belief, no other persons, except members, 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. 37 C.F.R. §2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B). If this verified statement is not filed with the original application, it must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2).

Ownership. 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 persons, except members, 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. 37 C.F.R. §2.44(a)(4)(i)(D); see 15 U.S.C. §1051(a)(3)(A), (a)(3)(D).

Concurrent Use. The verification for concurrent use should be modified to indicate an exception that no other persons except members and the concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.44(d); see 15 U.S.C. §1051(a)(3)(D). See TMEP §1207.04(d)(ii) for concurrent use application requirements for a collective mark.

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 mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce]...,” or wording that disavows the substance of the declaration, are unacceptable.

Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce (in an application based on §1(a)); or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce (in an application based on §1(b) or §44). 37 C.F.R. §2.44(b)(1). See TMEP §804.03 for information regarding time between execution and filing of documents.

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.