TMEP 804.05: Verification of §66(a) Application
October 2017 Edition of the TMEP
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804.05 Verification of §66(a) Application
In trademark and service mark applications under §66(a) of the Act, the request for extension of protection to the United States must include a declaration alleging 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). In addition, the declaration must 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 that the U.S. Congress can regulate 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, or association has the right to use the mark in commerce that the U.S. Congress can regulate 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. 15 U.S.C. §1141(f)(a); 37 C.F.R §2.33(e)(2) -(4). 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) a qualified practitioner 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 verified statement in a §66(a) application for a trademark or service mark is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should generally not issue any inquiry regarding the verification of the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it 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 §1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, TMEP §1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and TMEP §1306.02(b)(ii) for declarations in §66(a) applications for certification marks.