1604.09 Goods and/or Services Set Forth in §8 Affidavit or Declaration
1604.09(a) Goods and/or Services Must Be Specified or Expressly Incorporated by Reference
Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(e)(1), the affidavit or declaration must specify the goods/services recited in the registration on or in connection with which the mark is in use in commerce, and/or the goods/services for which excusable nonuse is claimed. See TMEP §1604.10 regarding use in commerce, and TMEP §1604.11 regarding excusable nonuse. The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., "all goods/services listed in the registration" or "all goods/services listed in the registration except... [specifying the goods/services not covered by the affidavit or declaration]"). Incorporation by reference is recommended, to avoid inadvertent omissions.
If the owner is alleging use with respect to some of the goods/services and excusable nonuse for other goods/services, the owner must clearly indicate which goods/services are in use and which goods/services are not in use.
1604.09(b) Deletion of Goods and/or Services
If the owner of the registration intends to delete goods/services from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R. §2.161(e)(2). Once an owner expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted. For example, reinsertion is prohibited after the owner submits a TEAS §8 form indicating that certain goods, services, or classes are to be deleted, as the form states that the filing does not cover the deleted goods, services, or classes and that they are to be permanently deleted from the registration.
1604.09(c) Failure to List All Goods and/or Services Recited in Registration
An affidavit or declaration that fails to list or incorporate by reference all the goods/services recited in the registration, and does not include a statement of intent to delete the omitted goods/services, is deficient. The Post Registration staff will issue an Office action requiring the party to either 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 or state that the omitted goods/services should be deleted.
If the owner files a substitute or supplemental affidavit or declaration adding the omitted goods/services, the owner must verify that the mark was in use in commerce on or in connection with the goods/services during the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058. This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the deadline set forth in §8 of the Act with the deficiency surcharge required by §8(c) of the Act. See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the owner 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 within the period for response to the Office action ( see TMEP §1604.16 ), the omitted goods/services will be deleted from the registration.
1604.09(d) New Goods and/or Services Cannot Be Added
Goods and/or services that are not listed in the registration may not be set forth in the §8 affidavit or declaration.