TMEP 1613.09(c): Failure to List All Goods/Services/Collective Membership Organization in Registration

October 2017 Edition of the TMEP

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1613.09(c)    Failure to List All Goods/Services/Collective Membership Organization in Registration

An affidavit or declaration that fails to list or incorporate by reference all the goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of intent to delete the omitted goods/services/classes, is deficient.  In such case, the Post Registration staff will issue an Office action requiring the party to either (1) file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization or (2) state that the omitted goods/services/classes should be deleted.

If the holder files a substitute or supplemental affidavit or declaration adding the omitted goods/services/ collective membership organization, the holder must verify that the mark was in use in commerce on or in connection with the goods/services/collective membership organization during the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k.  This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the deadline set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act.  See TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

If the holder does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization within the period for response to the Office action ( see TMEP §1613.16), the omitted goods/services/classes will be deleted from the registration.