TMEP 804.02: Averments Required in Verification of Application for Registration - §1 or §44 Application

This is the October 2015 Edition of the TMEP

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804.02    Averments Required in Verification of Application for Registration - §1 or §44 Application

The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3), and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), (b)(3), 1126, and 37 C.F.R. §§2.33 and 2.34. See In re Brack, 114 USPQ2d 1338, 1342 (TTAB 2015) (holding signature and verification of the averments in application is a requirement for establishing a basis). These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §804.05 regarding the requirements for verification of a §66(a) application.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that “to the best of the signatory's knowledge and belief, the facts recited in the application are accurate.” The language in 37 C.F.R. §2.20 that “all statements made of [the signatory's] own knowledge are true and all statements made on information and belief are believed to be true” satisfies this requirement. See 37 C.F.R. §2.33(b)(1), (b)(2).

Use in Commerce. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce. 37 C.F.R. §2.34(a)(1)(i). If this verified statement is not filed with the original application, it must also allege that the mark was in use in commerce as of the application filing date. Id.

Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e); 37 C.F.R. §2.34(a)(2), (a)(3)(i), (a)(4)(ii). If this verified statement is not filed with the original application, it must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(2), (a)(3)(i), (a)(4)(ii).

Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the applicant believes the applicant is the owner of the mark and that to the best of the signatory’s knowledge and belief, no other person, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(a)(3)(A), (a)(3)(D); 37 C.F.R. §2.33(b)(1).

In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application, and that to the best of the signatory's knowledge and belief, no other person, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(b)(3)(A), (b)(3)(D); 37 C.F.R. §2.33(b)(2); see 15 U.S.C. §1126(d), (e).

While the correct language for an application filed under §1(b) or §44 is “entitled to use,” if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the USPTO will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.

Concurrent Use. The verification for concurrent use should be modified to indicate an exception; i.e., that no other person except as specified in the application has the right to use the mark in commerce. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.33(f). See TMEP §1207.04 regarding concurrent use registration.

Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See TMEP §§1201.03–1201.03(e) regarding use by related companies.

Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as “the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce...,” or wording that disavows the substance of the declaration, are unacceptable.

Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.

See TMEP §§1303.01(b)(i), 1304.02(b)(i), and 1306.02(b)(i) for averments required in a verification for a §1 or §44 application for a collective or certification mark.