1605.04 Requirements for Affidavit or Declaration of Incontestability
Section 15 of the Act refers to the affidavit or declaration merely as “setting forth” the specified information. See 15 U.S.C. §1065(3). Therefore, no showing or proof beyond the owner’s verified statement is required.
Must be Filed by Owner. In order to be effective, the §15 affidavit or declaration must be filed by the person who is the owner of the registration at the time the affidavit or declaration is filed. 37 C.F.R. §§2.167(a), 2.193(e)(1). If the affidavit or declaration was filed by the wrong party, the true owner may file a new affidavit or declaration, with a new filing fee.
Fee. A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. See 37 C.F.R. §§2.6, 2.167(g). If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).
Goods/Services/Collective Membership Organization Must be Recited. The §15 affidavit or declaration must specify the goods, services, or nature of the collective membership organization recited in the registration on or in connection with which the mark has been in continuous use in commerce for the five-year period after the date of registration or publication under §12(c), and is still in use in commerce. 15 U.S.C. §1065(3); 37 C.F.R. §2.167(c). More than one affidavit or declaration may be filed at different times for different goods/services/classes in the same registration.
Mark Must be in Use in Commerce. Regardless of the basis for registration, the use on which the §15 affidavit or declaration is based must be use in commerce. This applies to both foreign and domestic registrants. It is not necessary to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the United States Congress can regulate, unless there is contradictory evidence in the record. See TMEP §§901 et seq. regarding use in commerce.
No Adverse Decision or Pending Proceeding Involving Rights in the Mark. The §15 affidavit or declaration must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods, services, or collective membership organization, or to the owner’s right to register the mark or to keep the mark on the register. It must also state that there is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of. 15 U.S.C. §§1065(1), (2); 37 C.F.R. §2.167(d), (e). If the USPTO finds facts contrary to either of the foregoing statements, the USPTO will not acknowledge receipt of the §15 affidavit or declaration. See TMEP §1605. The USPTO does not consider a proceeding involving the mark in which the owner is the plaintiff, where there is no counterclaim involving the owner’s rights in the mark, to be a “proceeding involving these rights” that would preclude the filing or acknowledgment of a §15 affidavit or declaration.
If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit or declaration, even if the proceeding was instituted after the owner filed the §15 affidavit or declaration but before the affidavit or declaration was reviewed by the USPTO. If a pending proceeding is later dismissed, the owner may file a new affidavit or declaration, with a new filing fee.
Verification. The §15 affidavit or declaration must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the owner of the registration or a person properly authorized to sign on behalf of the owner of the registration. 37 C.F.R. §§2.167(a), 2.193(e)(1). A “person who is properly authorized to sign on behalf of the owner” is: (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the owner. 37 C.F.R. §2.193(e)(1). Generally, the USPTO does not question the authority of the person who signs a §15 affidavit or declaration, unless there is an inconsistency in the record as to the signatory’s authority to sign. TMEP §611.03(a).