TMEP 1904.01(c): Declaration of Intent to Use Required

This is the October 2015 Edition of the TMEP

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1904.01(c)    Declaration of Intent to Use Required

Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §§1141f(a). For a trademark or service mark application, such declaration must specify that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §§2.33(e)(1), 2.34(a)(5); see 15 U.S.C. §§1127, 1141(5). This declaration must also include a statement that: the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; the signatory believes the applicant/holder to be entitled to use the mark in commerce on or in connection with the goods or services specified in the international application/subsequent designation; and to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. §§2.33(e)(2)-(4), 2.34(a)(5); see 15 U.S.C. §§1127, 1141(5).

The declaration must be signed by: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. 37 C.F.R. §2.193(e)(1).

The USPTO has provided the IB a declaration of bona fide intention to use the mark in commerce for a trademark or service mark, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18). Instructions as to who is a proper party to sign the declaration have also been provided to the IB.

The IB will ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO. The IB does not send the verified statement to the USPTO.

The verified statement remains part of the international registration on file with the IB. 37 C.F.R. §2.33(e). Accordingly, the examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of a trademark or service mark application on file with the IB. In cases where the applicant voluntarily files a substitute declaration with the USPTO, the substitute declaration will be examined according to the same standards used for examining any other declaration.

See TMEP §1904.02(d) for information regarding the verified statement for a §66(a) application for a collective trademark, collective service mark, collective membership mark, or certification mark.

See also TMEP §804.05 for further information about declarations in §66(a) applications for trademarks and service marks, TMEP §§1303.01(a)(v) and 1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, TMEP §§1304.02(a)(v) and 1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and TMEP §§1306.02(a)(v) and 1306.02(b)(ii) for declarations in §66(a) applications for certification marks.