TMEP 1613.05: Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse

This is the October 2015 Edition of the TMEP

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1613.05    Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse

37 C.F.R. §7.37 Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse.

A complete affidavit or declaration under section 71 of the Act must:

  • (a) Be filed by the holder of the international registration within the period set forth in §7.36(b);
  • (b) Include a verified statement attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 71 of the Act. The verified statement must be executed on or after the beginning of the filing period specified in §7.36(b). A person who is properly authorized to sign on behalf of the holder is:
  • (1) A person with legal authority to bind the holder;
  • (2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the holder; or
  • (3) An attorney as defined in §11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the holder.
  • (c) Include the U.S. registration number;
  • (d)(1) Include the fee required by §7.6 for each class that the affidavit or declaration covers;
  • (2) If the affidavit or declaration is filed during the grace period under section 71(a)(3) of the Act, include the grace period surcharge per class required by §7.6;
  • (3) If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either submission of the additional fee(s) or specification of the class(es) to which the initial fee(s) should be applied. If the additional fee(s) are not submitted within the time period set out in the Office action and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class;
  • (e)(1) Specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed under paragraph (f)(2) of this section; and;
  • (2) Specify the goods, services, or classes being deleted from the registration, if the affidavit or declaration covers fewer than all the goods, services, or lclasses in the registration;
  • (f)(1) State that the registered mark is in use in commerce; or
  • (2) If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume; and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and
  • (g) Include one specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed under paragraph (f)(2) of this section. When requested by the Office, additional specimens must be provided. The specimen must meet the requirements of §2.56 of this chapter.
  • (h) The Office may require the holder to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 71 of the Act.
  • (i) Additional requirements for a collective mark. In addition to the above requirements, a complete affidavit or declaration pertaining to a collective mark must:
  • (1) State that the holder is exercising legitimate control over the use of the mark in commerce; and
  • (2) State the nature of the holder’s control over the use of the mark by the members in the first affidavit or declaration filed under paragraph (a) of this section.
  • (j) Additional requirements for a certification mark. In addition to the above requirements, a complete affidavit or declaration pertaining to a certification mark must:
  • (1) Include a copy of the certification standards specified in § 2.45(a)(4)(i)(B) of this chapter;
  • (i) Submitting certification standards for the first time. In the first affidavit or declaration filed under paragraph (a) of this section, include a copy of the certification standards; or
  • (ii) Certification standards submitted in prior filing. If the certification standards in use at the time of filing the affidavit or declaration have not changed since the date they were previously submitted to the Office, include a statement to that effect; if the certification standards in use at the time of filing the affidavit or declaration have changed since the date they were previously submitted to the Office, include a copy of the revised certification standards;
  • (2) State that the holder is exercising legitimate control over the use of the mark in commerce; and
  • (3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C) of this chapter.

See TMEP §§1613.06–1613.19 for general requirements for §71 affidavits or declarations of use or excusable nonuse for trademarks or service marks and TMEP §§1613.20–TMEP § 1613.21(d) for additional requirements for §71 affidavits or declarations for collective marks and certification marks.