§2.21-§2.48    APPLICATION FOR REGISTRATION

§2.21    Requirements for receiving a filing date.

• (a) The Office will grant a filing date to an application under section 1 or section 44 of the Act that is filed through TEAS, is written in the English language, and contains all of the following:
  • (1) The name, address, and email address of each applicant;
  • (2) If the applicant is represented by a practitioner qualified under § 11.14 of this chapter, the practitioner's name, postal address, and email address;
  • (3) A clear drawing of the mark;
  • (4) A listing of the goods or services; and
  • (5) The filing fee required under § 2.6 for at least one class of goods or services.
  
• (b) If the applicant does not satisfy all the elements required in paragraph (a) of this section, the Office will deny a filing date to the application unless the applicant meets the requirements of paragraph (c) of this section.
• (c) If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraph (a) of this section to file through TEAS and provide an email address do not apply.

[47 FR 38695, Sept. 2, 1982, as amended at 51 FR 29921, Aug. 21 1986; 54 FR 37588, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 84 FR 37081, July 31, 2019, as amended at 84 FR 68045, Dec. 13, 2019, effective Feb. 15, 2020]

§2.22    Requirements for a TEAS Plus application.

• (a) A trademark/service mark application for registration on the Principal Register under section 1 and/or section 44 of the Act that meets the requirements for a filing date under § 2.21 will be entitled to a reduced filing fee under § 2.6(a)(1)(iv) if it includes:
  • (1) The applicant’s name and domicile address;
  • (2) The applicant’s legal entity;
  • (3) The citizenship of each individual applicant, or the state or country of incorporation or organization of each juristic applicant;
  • (4) If the applicant is a domestic partnership, the names and citizenship of the general partners, or if the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture;
  • (5) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor;
  • (6) One or more bases for filing that satisfy all the requirements of § 2.34. If more than one basis is set forth, the applicant must comply with the requirements of § 2.34 for each asserted basis;
  • (7) Correctly classified goods and/or services, with an identification of goods and/or services from the Office's Acceptable Identification of Goods and Services Manual, available through the TEAS Plus form. In an application based on section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;
  • (8) If the application contains goods and/or services in more than one class, compliance with § 2.86;
  • (9) A filing fee for each class of goods and/or services, as required by § 2.6(a)(1)(iv);
  • (10) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the owner pursuant to § 2.193(e)(1);
  • (11) If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark. If the mark includes color, the drawing must show the mark in color;
  • (12) If the mark is in standard characters, a mark comprised only of characters in the Office's standard character set, typed in the appropriate field of the TEAS Plus form;
  • (13) If the mark includes color, a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark;
  • (14) If the mark is not in standard characters, a description of the mark;
  • (15) If the mark includes non-English wording, an English translation of that wording;
  • (16) If the mark includes non-Latin characters, a transliteration of those characters;
  • (17) If the mark includes an individual’s name or portrait, either (i) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (ii) a statement that the name or portrait does not identify a living individual (see section 2(c) of the Act);
  • (18) If the applicant owns one or more registrations for the same mark, and the owner(s) last listed in Office records of the prior registration(s) for the same mark differs from the owner(s) listed in the application, a claim of ownership of the registration(s) identified by the registration number(s), pursuant to § 2.36;
  • (19) If the application is a concurrent use application, compliance with § 2.42; and
  • (20) An applicant whose domicile is not located within the United States or its territories must designate an attorney as the applicant’s representative, pursuant to § 2.11(a), and include the attorney’s name, postal address, email address, and bar information.
  
• (b) In addition to the filing requirements under paragraph (a) of this section, the applicant must comply with § 2.23(a) and (b).
• (c) If an application does not fulfill the requirements of paragraph (a) of this section, the applicant must pay the processing fee required by § 2.6(a)(1)(v).
• (d) The following types of applications cannot be filed as TEAS Plus applications:
  • (1) Applications for certification marks (see § 2.45);
  • (2) Applications for collective trademarks and service marks (see § 2.44);
  • (3) Applications for collective membership marks (see § 2.44); and
  • (4) Applications for registration on the Supplemental Register (see § 2.47).
  

[Added 70 FR 38768, July 6, 2005, effective July 18, 2005; amended 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 79 FR 74633, Dec. 16, 2014, effective Jan. 17, 2015; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015; 80 FR 33170, June 11, 2015, effective July 11, 2015; 84 FR 31498, July 2, 2019, effective August 3, 2019; 84 FR 37081, July 31, 2019, as amended at 84 FR 68045, Dec. 13, 2019, effective Feb. 15, 2020]

§2.23    Requirement to correspond electronically with the Office and duty to monitor status.

• (a) Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS.
• (b) Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.
• (c) Except for submissions under §§ 2.91, 2.93, and 2.149, if the applicant or registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply.
• (d) Notices issued or actions taken by the USPTO are displayed in the USPTO's publicly available electronic systems. Applicants and registrants are responsible for monitoring the status of their applications and registrations in the USPTO's electronic systems during the following time periods:
  • (1) At least every six months between the filing date of the application and issuance of a registration;
  • (2) After filing an affidavit of use or excusable nonuse under section 8 or section 71 of the Act, or a renewal application under section 9 of the Act, at least every six months until the registrant receives notice that the affidavit or renewal application has been accepted; and
  • (3) After notice of the institution of an expungement or reexamination proceeding under § 2.92, at least every three months until the registrant receives a notice of termination under § 2.94.
  

[Added 70 FR 38768, July 6, 2005, effective July 18, 2005; amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 79 FR 74633, Dec. 16, 2014, effective Jan. 17, 2015; 84 FR 37081, July 31, 2019, effective Feb. 15, 2020; 86 FR 64300, Nov. 17, 2021, effective Dec. 18, 2021]

§2.24    Designation and revocation of domestic representative by foreign applicant.

• (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served).
• (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8).
• (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37588 Sept. 11, 1989; 67 FR 79520, Dec. 30, 2002; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 84 FR 37081, July 31, 2019, effective Feb. 15, 2020]

§2.25    Documents not returnable.

Except as provided in § 2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed.

[Amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]

§2.26    [Removed]

[Removed 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]

§2.27    Pending trademark application index; access to applications.

• (a) An index of pending applications including the name and address of the applicant, a reproduction or description of the mark, the goods or services with which the mark is used, the class number, the dates of use, and the serial number and filing date of the application will be available for public inspection as soon as practicable after filing.
• (b) Except as provided in paragraph (e) of this section, access to the file of a particular pending application will be permitted prior to publication under § 2.80 upon written request.
• (c) Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.
• (d) Except as provided in paragraph (e) of this section, the official records of applications and all proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by § 2.6.
• (e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.

[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 FR 27225, June 14, 1983; 68 FR 14332, March 25, 2003, effective May 1, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]

§2.32    Requirements for a complete trademark or service mark application.

• (a) The application must be in English and include the following:
  • (1) A request for registration;
  • (2) The name, domicile address, and email address of each applicant. If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide an email address does not apply;
  • (3)
    • (i) The legal entity type and citizenship of the applicant(s); and
    • (ii) If the applicant is a corporation, association, partnership or other juristic person, the jurisdiction (usually state or nation) under the laws of which the applicant is organized;
    • (iii) If the applicant is a domestic partnership, the names and citizenship of the general partners;
    • (iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture; or
    • (v) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor.
  • (4) When the applicant is, or must be, represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter, the attorney’s name, postal address, email address, and bar information;
  • (5) One or more bases, as required by § 2.34(a);
  • (6) A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. In a U.S. application filed under section 44 of the Act, the scope of the goods or services covered by the section 44 basis may not exceed the scope of the goods or services in the foreign application or registration;
  • (7) The international class of goods or services, if known. See § 6.1 of this chapter for a list of the international classes of goods and services;
  • (8) If the mark is not in standard characters, a description of the mark;
  • (9) If the mark includes non-English wording, an English translation of that wording; and
  • (10) If the mark includes non-Latin characters, a transliteration of those characters, and either a translation of the transliterated term in English, or a statement that the transliterated term has no meaning in English.
  
• (b) The application must include a verified statement that meets the requirements of § 2.33.
• (c) The application must include a drawing that meets the requirements of § 2.51 and § 2.52.
• (d) The application must include the fee required by § 2.6 for each class of goods or services.
• (e) For the requirements of a multiple-class application, see § 2.86.
• (f) For the requirements of all collective mark applications, see § 2.44.
• (g) For the requirements of a certification mark application, see § 2.45.

[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 73 FR 13780, March 14, 2008, effective May 13, 2008; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 80 FR 33170, June 11, 2015, effective July 11, 2015; 84 FR 31498, July 2, 2019, effective August 3, 2019; 84 FR 37081, July 31, 2019, effective Feb. 15, 2020]

§2.33    Verified statement for a trademark or service mark.

• (a) The application must include a verified statement.
• (b)
  • (1) In an application under section 1(a) of the Act, the verified statement must allege: That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; 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; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.
  • (2) In an application under section 1(b) or 44 of the Act, the verified statement must allege:

    That the applicant has a bona fide intention to use the mark in commerce; that the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; 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; and that the facts set forth in the application are true.

  
• (c) If the verified statement in paragraph (b)(1) or (2) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that the mark was in use in commerce as of the application filing date, or the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
• (d) [Reserved]
• (e) In an application under section 66(a) of the Act, the verified statement, which is part of the international registration on file with the International Bureau, must allege that:
  • (1) 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;
  • (2) The signatory is properly authorized to execute the declaration on behalf of the applicant/holder;
  • (3) 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
  • (4) 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 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.
  
• (f) In an application for concurrent use under § 2.42, the verified statement in paragraph (b)(1) of this section must be modified to indicate that no other person except as specified in the application has the right to use the mark in commerce.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 67 FR 79520, Dec. 30, 2002; 68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.34    Bases for filing a trademark or service mark application.

• (a) An application for a trademark or service mark must include one or more of the following five filing bases:
  • (1) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
    • (i) The applicant’s verified statement that the mark is in use in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce as of the application filing date;
    • (ii) The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;
    • (iii) The date of the applicant’s first use of the mark in commerce;
    • (iv) One specimen showing how the applicant uses the mark in commerce; and
    • (v) If the application specifies more than one item of goods or services in a class, the dates of use in paragraphs (a)(1)(ii) and (iii) of this section are required for only one item of goods or services specified in that class.
  • (2) Intent-to-use under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
  • (3) Registration of a mark in a foreign applicant’s country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
    • (i) The applicant’s verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the Office will require submission of the verified statement, which must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
    • (ii) A true copy, a photocopy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. The certification or copy of the foreign registration must show the name of the owner, the mark, and the goods or services for which the mark is registered. If the foreign registration is not in the English language, the applicant must submit a translation.
    • (iii) If the record indicates that the foreign registration will expire before the U.S. registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a proof of renewal from the applicant’s country of origin to establish that the foreign registration has been renewed and will be in full force and effect at the time the U.S. registration will issue. If the proof of renewal is not in the English language, the applicant must submit a translation.
  • (4) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
    • (i) A claim of priority, filed within six months of the filing date of the foreign application. Before publication or registration on the Supplemental Register, the applicant must either:
      • (A) Specify the filing date, serial number and country of the first regularly filed foreign application; or
      • (B) State that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
    • (ii) The applicant’s verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the Office will require submission of the verified statement, which must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
    • (iii) Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under section 1 or 44 of the Act.
  • (5) Extension of protection of an international registration under section 66(a) of the Act. In an application under section 66(a) of the Act, the international application/subsequent designation must contain a signed declaration that meets the requirements of § 2.33(a), (e).
  
• (b) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis and the goods or services to which that basis applies. An applicant must specify the goods or services covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods or services in the same application. A basis under section 66(a) of the Act may not be combined with another basis.

[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 67 FR 79520, Dec. 30, 2002; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 77 FR 30197, May 22, 2012, effective June 21, 2012; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.35    Adding, deleting, or substituting bases.

• (a) In an application under section 66(a) of the Act, an applicant may not add, substitute or delete a basis, unless the applicant meets the requirements for transformation under section 70(c) of the Act and § 7.31 of this chapter.
• (b) In an application under section 1 or section 44 of the Act:
  • (1) Before publication for opposition, an applicant may add or substitute a basis, if the applicant meets all requirements for the new basis, as stated in § 2.34, § 2.44, or § 2.45. The applicant may delete a basis at any time.
  • (2) After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition. Republication will be required. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by § 2.133(a).
  • (3) When an applicant substitutes one basis for another, the Office will presume that there was a continuing valid basis, unless there is contradictory evidence in the record, and the application will retain the original filing date, including a priority filing date under section 44(d), if appropriate.
  • (4) If an applicant properly claims a section 44(d) basis in addition to another basis, the applicant will retain the priority filing date under section 44(d) no matter which basis the applicant perfects.
  • (5) The applicant may add or substitute a section 44(d) basis only within the six-month priority period following the filing date of the foreign application.
  • (6) When the applicant adds or substitutes a basis, the applicant must list each basis and specify the goods, services, or collective membership organization to which that basis applies.
  • (7) When the applicant deletes a basis, the applicant must also delete any goods, services, or collective membership organization covered solely by the deleted basis.
  • (8) Once an applicant claims a section 1(b) basis as to any or all of the goods or services, or a collective membership organization, the applicant may not amend the application to seek registration under section 1(a) of the Act for identical goods or services or the same collective membership organization, unless the applicant files an allegation of use under section 1(c) or section 1(d) of the Act.
  

[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.36    Identification of prior registrations.

Prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner(s) last listed in Office records of the prior registrations differs from the owner(s) listed in the application.

[Amended at 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.37    Description of mark.

A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.

[30 FR 13193, Oct. 16, 1965; Redesignated at 64 FR 48920, Sept. 8, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 13780, March 14, 2008, effective May 13, 2008]

§2.38    Use by predecessor or by related companies.

• (a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 and 45 of the Act), and the use inures to the benefit of the applicant, the dates of first use (§§ 2.34(a)(1)(ii) and (iii)) may be asserted with a statement that first use was by the predecessor in title or by the related company, as appropriate.
• (b) The Office may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate for the purpose of showing that the use by related companies inures to the benefit of the applicant and does not affect the validity of the mark.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 80 FR 2303, Jan. 16, 2015, effective Feb. 17, 2015]

§2.41    Proof of distinctiveness under section 2(f).

• (a) For a trademark or service mark—
  • (1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required.
  • (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a trademark or service mark is said to have become distinctive of the applicant’s goods or services by reason of the applicant’s substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
  • (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the applicant’s goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
  
• (b) For a collective trademark or collective service mark—
  • (1) Ownership of prior registration(s). See the requirements of paragraph (a)(1) of this section.
  • (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a collective trademark or collective service mark is said to have become distinctive of the members’ goods or services by reason of the members’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
  • (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the members’ goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce, and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
  
• (c) For a collective membership mark—
  • (1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods, services, or nature of the collective membership organization are sufficiently similar to the collective membership organization in the application; however, further evidence may be required.
  • (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a collective membership mark is said to have become distinctive of indicating membership in the applicant’s collective membership organization by reason of the members’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
  • (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of indicating membership in the applicant’s collective membership organization, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the members’ use in commerce, and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
  
• (d) For a certification mark—
  • (1) Ownership of prior certification mark registration(s). In appropriate cases, ownership of one or more active prior certification mark registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the authorized users’ goods or services are sufficiently similar to the goods or services certified in the application, subject to the limitations of the statement set forth in § 2.45(a)(4)(i)(C); however, further evidence may be required.
  • (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a certification mark is said to have become distinctive of the certified goods or services by reason of the authorized users’ substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
  • (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive of the certified goods or services program, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the authorized users’ use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
  
• (e) Certification marks with geographical matter. Paragraph (d) of this section does not apply to geographical matter in a certification mark certifying regional origin because section 2(e)(2) of the Act does not apply to certification marks that are indications of regional origin.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37590, Sept. 11, 1989; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.42    Concurrent use.

• (a) Prior to seeking concurrent use, an application for registration on the Principal Register under the Act must assert use in commerce and include all the application elements required by the preceding sections, in addition to § 2.44 or § 2.45, if applicable.
• (b) The applicant must also include a verified statement that indicates the following, to the extent of the applicant’s knowledge:
  • (1) For a trademark or service mark, the geographic area in which the applicant is using the mark in commerce; for a collective mark or certification mark, the geographic area in which the applicant’s members or authorized users are using the mark in commerce;
  • (2) For a trademark or service mark, the applicant’s goods or services; for a collective trademark, collective service mark, or certification mark, the applicant’s members’ or authorized users’ goods or services; for a collective membership mark, the nature of the applicant’s collective membership organization;
  • (3) The mode of use for which the applicant seeks registration;
  • (4) The concurrent users’ names and addresses;
  • (5) The registrations issued to or applications filed by such concurrent users, if any;
  • (6) For a trademark or service mark, the geographic areas in which the concurrent user is using the mark in commerce; for a collective mark or certification mark, the geographic areas in which the concurrent user’s members or authorized users are using the mark in commerce;
  • (7) For a trademark or service mark, the concurrent user’s goods or services; for a collective trademark, collective service mark, or certification mark, the concurrent user’s members’ or authorized users’ goods or services; for a collective membership mark, the nature of the concurrent user’s collective membership organization;
  • (8) The mode of use by the concurrent users or the concurrent users’ members or authorized users; and
  • (9) The time periods of such use by the concurrent users or the concurrent users’ members or authorized users.
  
• (c) For the requirements to amend an application to concurrent use, see § 2.73.
• (d) For the requirements of a concurrent use proceeding, see § 2.99.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 34897, Aug. 22, 1989; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.43    Service mark.

In an application to register a service mark, the application shall specify and contain all the elements required by the preceding sections for trademarks, but shall be modified to relate to services instead of to goods wherever necessary.

§2.44    Requirements for a complete collective mark application.

• (a) A complete application to register a collective trademark, collective service mark, or collective membership mark must include the following:
  • (1) The requirements specified in § 2.32(a) introductory text through (a)(4), (a)(8) through (10), (c), and (d);
  • (2)
    • (i) For a collective trademark or collective service mark, a list of the particular goods or services on or in connection with which the applicant’s members use or intend to use the mark; or
    • (ii) For a collective membership mark, a description of the nature of the membership organization such as by type, purpose, or area of activity of the members; and
    • (iii) In a U.S. application filed under section 44 of the Act, the scope of the goods or services or the nature of the membership organization covered by the section 44 basis may not exceed the scope of the goods or services or nature of the membership organization in the foreign application or registration.
  • (3)
    • (i) For a collective trademark or collective service mark application, the international class of goods or services, if known. See § 6.1 of this chapter for a list of the international classes of goods and services; or
    • (ii) For a collective membership mark application filed under sections 1 or 44 of the Act, classification in U.S. Class 200; and for a collective membership mark application filed under section 66(a) of the Act, the international class(es) assigned by the International Bureau in the corresponding international registration.
  • (4) One or more of the following five filing bases:
    • (i) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
      • (A) A statement specifying the nature of the applicant’s control over the use of the mark by the members;
      • (B) For a collective trademark or collective service mark, the date of the applicant’s member’s first use of the mark anywhere on or in connection with the goods or services and the date of the applicant’s member’s first use of the mark in commerce; or for a collective membership mark, the date of the applicant’s member’s first use anywhere to indicate membership in the collective organization and the date of the applicant’s member’s first use in commerce. If the application specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
      • (C) One specimen showing how a member uses the mark in commerce; and
      • (D) A verified statement alleging:

        That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons except members have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods, services, or collective membership organization of such other persons to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s members; and that the facts set forth in the application are true.

    • (ii) Intent-to-use under section 1(b) of the Act. The requirement for an application based on section 1(b) of the Act is a verified statement alleging:

      That the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods, services, or collective membership organization of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.

    • (iii) Registration of a mark in a foreign applicant’s country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
      • (A) The requirements of § 2.34(a)(3)(ii) and (iii); and
      • (B) A verified statement in accordance with paragraph (a)(4)(ii) of this section.
    • (iv) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
      • (A) The requirements of § 2.34(a)(4)(i) and (iii); and
      • (B) A verified statement in accordance with paragraph (a)(4)(ii) of this section.
    • (v) Extension of protection of an international registration under section 66(a) of the Act. The requirement for an application under section 66(a) of the Act is a verified statement alleging that the applicant/holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of 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; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, 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, services, or collective membership organization of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.
  
• (b) Verification not filed within reasonable time or omitted.
  • (1) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce; or
  • (2) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), or (a)(4)(v) of this section is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce.
  
• (c) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis, followed by the goods, services, or collective membership organization to which that basis applies. An applicant must specify the goods, services, or collective membership organization covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods, or services, or the same collective membership organization in one application. A basis under section 66(a) of the Act may not be combined with another basis.
• (d) In an application for concurrent use under § 2.42, the verified statement in paragraph (a)(4)(i)(D) of this section must be modified to indicate that no other persons except members and the concurrent users as specified in the application have the right to use the mark in commerce.
• (e) Multiple-class applications. For the requirements of a multiple-class application, see § 2.86.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37590, Sept. 11, 1989; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.45    Requirements for a complete certification mark application; restriction on certification mark application.

• (a) A complete application to register a certification mark must include the following:
  • (1) The requirements specified in § 2.32(a) introductory text through (a)(4), (a)(8) through (10), (c), and (d);
  • (2) A list of the particular goods or services on or in connection with which the applicant’s authorized users use or intend to use the mark. In an application filed under section 44 of the Act, the scope of the goods or services covered by the section 44 basis may not exceed the scope of the goods or services in the foreign application or registration;
  • (3) For applications filed under section 1 or 44 of the Act, classification in U.S. Class A for an application certifying goods and U.S. Class B for an application certifying services. For applications filed under section 66(a) of the Act, the international class(es) of goods or services assigned by the International Bureau in the corresponding international registration;
  • (4) One or more of the following five filing bases:
    • (i) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
      • (A) A statement specifying what the applicant is certifying about the goods or services in the application;
      • (B) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application;
      • (C) A statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant;
      • (D) The date of the applicant’s authorized user’s first use of the mark anywhere on or in connection with the goods or services and the date of the applicant’s authorized user’s first use of the mark in commerce. If the application specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
      • (E) One specimen showing how an authorized user uses the mark in commerce; and
      • (F) A verified statement alleging:

        That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons except authorized users have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant’s authorized users; and that the facts set forth in the application are true.

    • (ii) Intent-to-use under section 1(b) of the Act. The requirements for an application based on section 1(b) of the Act are:
      • (A) A statement specifying what the applicant will be certifying about the goods or services in the application;
      • (B) A statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant; and
      • (C) A verified statement alleging:

        That the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.

    • (iii) Registration of a mark in a foreign applicant’s country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
      • (A) The requirements of § 2.34(a)(3)(ii) and (iii);
      • (B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this section; and
      • (C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of this section.
    • (iv) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
      • (A) The requirements of § 2.34(a)(4)(i) and (iii);
      • (B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this section; and
      • (C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of this section.
    • (v) Extension of protection of an international registration under section 66(a) of the Act. The requirements for an application under section 66(a) of the Act are:
      • (A) The requirements of paragraphs (a)(4)(ii)(A) and (B) of this section; and
      • (B) A verified statement alleging that the applicant/holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of 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; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except authorized users, 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.
  
• (b) Verification not filed within reasonable time or omitted.
  • (1) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce; or
  • (2) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), or (a)(4)(v)(B) of this section is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce.
  
• (c) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis, followed by the goods or services to which that basis applies. An applicant must specify the goods or services covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods or services in the same application. A basis under section 66(a) of the Act may not be combined with another basis.
• (d) Concurrent use. In an application for concurrent use under § 2.42, the verified statement in paragraph (a)(4)(i)(F) of this section must be modified to indicate that no other persons except authorized users and concurrent users as specified in the application have the right to use the mark in commerce.
• (e) Multiple-class applications. For the requirements of a multiple-class application, see § 2.86.
• (f) Restriction on certification mark application. A single application may not include a certification mark and another type of mark. The same mark for the same goods or services is not registrable as both a certification mark and another type of mark. See sections 4 and 14(5)(B) of the Act.

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37590, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 80 FR 33170, June 11, 2015, effective July 11, 2015]

§2.46    Principal Register.

All applications will be treated as seeking registration on the Principal Register unless otherwise stated in the application. Service marks, collective marks, and certification marks, registrable in accordance with the applicable provisions of section 2 of the Act, are registered on the Principal Register.

§2.47    Supplemental Register.

• (a) In an application to register on the Supplemental Register under section 23 of the Act, the application shall so indicate and shall specify that the mark has been in use in commerce.
• (b) In an application to register on the Supplemental Register under section 44 of the Act, the application shall so indicate. The statement of lawful use in commerce may be omitted.
• (c) An application under section 66(a) of the Act is not eligible for registration on the Supplemental Register.
• (d) A mark in an application to register on the Principal Register under section 1(b) of the Act is eligible for registration on the Supplemental Register only after an acceptable amendment to allege use under § 2.76 or statement of use under § 2.88 has been timely filed.
• (e) An application for registration on the Supplemental Register must conform to the requirements for registration on the Principal Register under section 1(a) of the Act, so far as applicable.

[38 FR 18876, July 16, 1973, as amended at 54 FR 37590, Sept. 11, 1989; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]

§2.48    Office does not issue duplicate registrations.

If two applications on the same register would result in registrations that are exact duplicates, the Office will permit only one application to mature into registration, and will refuse registration in the other application.

[Added 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]