TMEP 1306.02(b)(ii): Statements Required in Verification of Application for Registration - §66(a) Application

This is the October 2015 Edition of the TMEP

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1306.02(b)(ii)    Statements Required in Verification of Application for Registration - §66(a) Application

The verified statement for a certification mark in a §66(a) application is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(b)(2).

In applications under §66(a) of the Act, the applicant must amend the request for extension of protection to the United States to include a declaration that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of 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. §2.45(a)(4)(v)(B). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, that no other person, firm, corporation, association, or other legal entity, except authorized users, 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/services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. 2.45(a)(4)(v)(B); see 15 U.S.C. §1141(f)(a).

Additionally, because the verified statement cannot be filed with the initial application, the verified statement 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. §2.45(b)(2).

See TMEP §1306.02(a)(v) for further information regarding filing-basis requirements, including the verified statement.