TMEP 1604.07(a): Affidavit or Declaration Must Be Filed by Owner

October 2017 Edition of the TMEP

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1604.07(a)    Affidavit or Declaration Must Be Filed by Owner

The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration.  Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, 15 U.S.C. §1058(a), (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. §§2.160(a), 2.161(a).

If it is unclear whether the party who filed the affidavit or declaration is the present owner, the Post Registration staff will issue an Office action requiring the party to establish its ownership.  If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, the owner may file evidence to establish ownership, even if the filing period set forth in §8 of the Act has expired.  There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. See TMEP §1604.07(b).

If the affidavit or declaration was not filed in the name of the owner of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true owner may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §2.6, and, if applicable, a specimen of use for each class.  If a new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration.  If a correction is submitted, the owner must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner. 37 C.F.R. §2.193(e)(1); TMEP §1604.08(a).  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration. See 37 C.F.R. §§2.161(b), 2.193(e)(1).

If the affidavit or declaration was not filed in the name of the owner of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time. 15 U.S.C. §1058(c).  The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected.  The true owner may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge. 37 C.F.R. §2.6(a)(20).  If a correction is submitted, the owner must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner. 37 C.F.R. §2.193(e)(1); TMEP §1604.08(a).  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration. 37 C.F. R.§2.161(b).

See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.