TMEP 1609.02(c): Supporting Specimens and Declaration

October 2017 Edition of the TMEP

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1609.02(c)    Supporting Specimens and Declaration

The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed. 37 C.F.R. §2.173(b)(3). When requested by the USPTO, additional specimens must be provided. Id. If a single specimen supports multiple classes, the owner may so indicate by specifying which classes the specimen supports, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should make a Note to the File in the record indicating which classes the specimen supports.

A request to amend a registration under §7 must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.173(b)(2), 2.193(e)(6); TMEP §§611.03(f), 1609.01(b).  In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(6).  If the affidavit or a declaration supporting use of the substitute specimen(s) is submitted in a separate document, it must be signed by a person properly authorized to sign a verification on behalf of the owner.  See TMEP §611.03(a) as to persons properly authorized to verify facts on behalf of an owner.

One specimen per class showing use of the proposed mark as amended on or in connection with the goods, services, or collective membership organization is required, even if the mark originally registered based on a foreign registration under §44 of the Trademark Act, 15 U.S.C. §1126(e) or an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).  See TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.

Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the amendment. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §7 amendment. 37 C.F.R. §2.173(b)(4).

See TMEP §§904.03 et seq. regarding trademark specimens, TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, TMEP §1304.02(a)(i)(C) regarding specimens for collective membership marks, and TMEP §1306.02(a)(i)(B) regarding specimens for certification marks.