1306.02    Application Requirements for a Certification Mark

Under 37 C.F.R. §2.45, a complete application for a certification mark must include the following:

  • (1) the legal name and physical address of the applicant (see TMEP §§803.02, 803.05);
  • (2) the applicant’s legal entity type (see TMEP §803.03);
  • (3) the applicant’s citizenship or the jurisdiction under whose laws the applicant is organized, and if the applicant is a domestic partnership or joint venture, the names and citizenship of the general partners or active members of the joint venture (see TMEP §§803.03(b), 803.04), or if applicant is a sole proprietorship, the state of its organization and the name and citizenship of the sole proprietor (37 C.F.R. §2.32(a)(3)(v), TMEP §§803.03(a), 803.04);
  • (4) a description of the mark if the mark is not in standard characters (see TMEP §808);
  • (5) a translation/transliteration of any foreign wording in the mark (see TMEP §809);
  • (6) a drawing of the mark sought to be registered (see TMEP §807);
  • (7) a filing fee (see TMEP §810);
  • (8) a filing basis (see TMEP §1306.02(a)-(a)(vi)), including:
    • (a) verification of certain statements signed by the applicant or a person properly authorized to sign on behalf of the applicant (see TMEP §§1306.02(b)-(b)(ii));
    • (b) a statement specifying what the applicant is (or will be) certifying about the goods or services (see TMEP §1306.03(a));
    • (c) a copy of the certification standards governing use of the certification mark on or in connection with the goods or services (see TMEP §1306.03(b)) (required for Section 1(a) applicants only); and
    • (d) a statement that the applicant is not engaged (or 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 (see TMEP § 1306.03(c));
  • (9) 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 (see TMEP §§805, 1402);
  • (10) classification in U.S. Class A for goods or U.S. Class B for services for a §1 or §44 application, or the classification assigned by the International Bureau for a §66(a) application (see TMEP §§805, 1401).

37 C.F.R. §2.45(a).

Requirements that differ in form from those in trademark or service mark applications. Most application requirements for certification marks are the same as those for regular trademarks and service marks. However, the filing basis, verification, identification, and classification requirements for certification mark applications differ in form from other trademarks and service mark applications because of the difference between who owns and uses certification marks. See TMEP §1306.02(a)-(a)(v) for information regarding filing-basis requirements, §§1306.02(b)-(b)(ii) for information regarding the verification of certain statements, §1306.02(c) for identification requirements, and §1306.02(d) for classification requirements in certification mark applications.

See TMEP §1306.03 for further information regarding the special elements of certification mark applications. See TMEP Chapter 1600 for post-registration requirements.

1306.02(a)    Filing Basis

See TMEP §1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to certification marks.

For a list of the requirements pertaining to each filing basis, see 37 C.F.R. §2.45(a)(4)(i)-(v)  and TMEP §§1306.02(a)(i)-(v).

1306.02(a)(i)    Use in Commerce – §1(a)

Under 15 U.S.C. §1051(a),  §1054, and 37 C.F.R. §2.45(a)(4)(i), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying what the applicant is certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(i)(A) );
  • (2) Submit 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 (37 C.F.R. §2.45(a)(4)(i)(B) );
  • (3) Submit 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 (37 C.F.R. §2.45(a)(4)(i)(C) );
  • (4) Specify the date of the applicant’s authorized user’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.45(a)(4)(i)(D) );
  • (5) Specify the date of the applicant’s authorized user’s first use of the mark in commerce (Id.);
  • (6) Submit one specimen for each class, showing how an authorized user uses the mark in commerce to reflect certification of regional or other origin; material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services (37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(b)(5) ); and
  • (7) Submit a verified statement 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 (see 15 U.S.C. §§1051(a)(3)(C),  1054; 37 C.F.R. §2.45(a)(4)(i)(F)). See TMEP §1306.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(a) of the Trademark Act.

The Trademark Act defines "commerce" as commerce which may lawfully be regulated by the U.S. Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C.  §1127; see TMEP §§901–901.04.

An applicant may claim both use in commerce under §1(a) of the Act and intent to use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application. 37 C.F.R. §2.45(c); see TMEP §806.02(b).

An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995) .

If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).

See TMEP §1306.03(a) regarding statements specifying what the mark certifies, §1306.03(b) regarding certification standards, and §1306.03(c) regarding a statement that the applicant is not engaged in the production or marketing of the goods/services.

1306.02(a)(i)(A)    Dates of Use

When specifying the dates of use as a certification mark, the applicant must indicate that the certification mark was first used by the applicant’s authorized users because a certification mark is not used by the applicant itself. See 37 C.F.R. §2.45(a)(4)(i)(D).

The date of first use anywhere is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’s services were first rendered, under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127   (definition of "use" within the definition of "abandonment of mark"). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.

The date of first use in commerce is the date when an applicant’s authorized user’s goods were first sold or transported, or an applicant’s authorized user’s services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127   (definition of "use" within the definition of "abandonment of mark"). See TMEP §901.01 for definitions of "commerce" and "use in commerce," and §901.03 regarding types of commerce.

In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) cannot show that an authorized user used the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.

Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant specify the date of first use and/or date of first use in commerce. See 37 C.F.R. §2.45(a)(4)(i)(D). The dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.45(a)(4)(i)(D), 2.71(c).

An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.

1306.02(a)(i)(B)    Specimens

A certification mark specimen must show how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 37 C.F.R. §2.56(b)(5); see In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) .

Although a certification mark performs a different function from a trademark or a service mark, users of certification marks typically apply them to goods and services in a manner similar to trademarks and service marks. That is, certification marks appear on labels, tags, or packaging for goods, or on materials used in the sale or advertising of services. Thus, specimens of use in certification mark applications generally are examined using the same standards that apply to specimens for trademarks and service marks. See TMEP §§904–904.07(b)(i) regarding specimens for trademarks and TMEP §1301.04-TMEP §1301.04(j) regarding specimens for service marks. However, because it is improper for certification marks to be used by their owners, any specimen of use submitted in support of a certification mark application must show use of the mark as a certification mark by an authorized user. 37 C.F.R. §2.56(b)(5).

Sometimes, the owner/certifier prepares tags or labels that bear the certification mark and that are supplied to the authorized users to attach to their goods or use in relation to their services. See Ex parte Porcelain Enamel Inst., Inc., 110 USPQ 258 (Comm’r Pats. 1956). These tags or labels are acceptable specimens if they are shown affixed to the certified goods. Cf. 37 C.F.R. §2.56(b)(1)-(2). A label or tag that is not shown physically attached to the goods may be accepted if, on its face, it clearly shows the mark in actual use in commerce. See TMEP §904.03(a) for more information regarding unattached labels or tags.

See TMEP §1306.04(c) for information regarding characteristics of certification marks and specimens that show the mark functions as a certification mark and §1306.05(b)(iii) regarding specimens for geographic certification marks.

1306.02(a)(ii)    Intent-to-Use – §1(b)

Under 15 U.S.C. §§1051(b),  1054, and 37 C.F.R. §2.45(a)(4)(ii), to establish a basis under §1(b) of the Trademark Act, the applicant must:

  • (1) Submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(ii)(A) );
  • (2) Submit 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 (37 C.F.R. §2.45(a)(4)(ii)(B) ); and
  • (3) Submit a verified statement 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 (37 C.F.R. §2.45(a)(4)(ii)(C); see 15 U.S.C. §§1051(b)(3)(B),  1054). See TMEP §1306.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §1(b) of the Trademark Act.

Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)   or a statement of use under 15 U.S.C. §1051(d) )  that states that (a) the mark is in use in commerce and (b) the applicant is exercising legitimate control over the use of the mark in commerce, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class. See 37 C.F.R. §§2.76, 2.88. See 37 C.F.R. §2.76  and TMEP §§1104–1104.11 regarding amendments to allege use and 37 C.F.R. §2.88  and TMEP §§1109–1109.18 regarding statements of use.

Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).

See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.

See TMEP Chapter 1100 for additional information about intent-to-use applications.

1306.02(a)(iii)    Foreign Priority – §44(d)

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. See 37 C.F.R. §2.45(a)(4); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §1306.02(a)(ii) regarding the requirements for a §1(b) basis.

Under 15 U.S.C. §§1054,  1126(d), and 37 C.F.R. §2.45(a)(4)(iv), to establish a basis under §44(d) of the Trademark Act, the applicant must:

  • (1) File a claim of priority within six months of the filing date of the foreign application (37 C.F.R. §2.45(a)(4)(iv)(A) );
  • (2) 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 (37 C.F.R. §2.45(a)(4)(iv)(A); see also Paris Convention Article 4(D));
  • (3) Submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(iv)(B) );
  • (4) Submit 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 (37 C.F.R. §2.45(a)(4)(iv)(B) ); and
  • (5) Submit a verified statement 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 (37 C.F.R. §2.45(a)(4)(iv)(C); see 15 U.S.C. §§1051(b)(3)(B),  1054). See TMEP §1306.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act.

The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.45(a)(2); TMEP §1402.01(b).

If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §2.35(b)(3), (b)(4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis and §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.

See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.

See TMEP §§1003–1003.08 for further information about §44(d) applications.

1306.02(a)(iv)    Foreign Registration – §44(e)

Under 15 U.S.C. §§1054,  1126(e)  and 37 C.F.R. §2.45(a)(4)(iii), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:

  • (1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. If the foreign registration or other certification is not in English, the applicant must provide a translation of the document. 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 (37 C.F.R. §2.45(a)(4)(iii)(A); TMEP §§1004.01, 1004.01(b));
  • (2) The applicant must submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(iii)(B) );
  • (3) The applicant must submit 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 (37 C.F.R. §2.45(a)(4)(iii)(B) );
  • (4) The applicant must submit a verified statement 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 (37 C.F.R. §2.45(a)(4)(iii)(C); see 15 U.S.C. §§1051(b)(3)(B),  1054 ). See TMEP §1306.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act; and
  • (5) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law (see 15 U.S.C.  §1026(b), TMEP §1002.03).

If the applicant does not submit a certification or a certified copy of the registration from its country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.

The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.45(a)(2); TMEP §1402.01(b).

An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §806.03 regarding amendments to add or substitute a basis.

See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and §1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.

See TMEP §§1004–1004.02 for further information about §44(e) applications.

1306.02(a)(iv)(A)    Scope of Foreign Registration

A registration as a certification mark in the United States may not be based on a foreign registration that is actually a trademark registration, i.e., a registration that is based on the registrant’s placement of the mark on his or her own goods as a trademark. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) (noting that the U.S. registration cannot exceed the breadth or scope of the foreign registration on which it is based); TMEP §1402.01(b). The scope of the registration, i.e., the nature of the registration right, would not be the same.

The scope and nature of the registration is not always immediately apparent from a foreign registration certificate. Foreign registration certificates may not always clearly identify whether the mark is a trademark, service mark, collective mark, or certification mark and even when they indicate the type, the significance of the term used for the type is not always clear. For example, the designation "collective" represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation "trademark," the body of the certificate might contain language to the contrary.

If a foreign registration certificate has a heading that designates the mark as a certification mark, or if the body of the foreign certificate contains language indicating that the registration is for certification, the foreign registration normally may be accepted to support registration in the United States as a certification mark.

Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R §2.61(b).

1306.02(a)(v)    Extension of Protection of International Registration – §66(a)

Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a),  provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.45(a)(4)(v). To establish a basis under §66(a), the applicant must:

  • (1) Submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(v)(A) );
  • (2) Submit 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 (37 C.F.R. §2.45(a)(4)(v)(A) ); and
  • (3) Submit a verified statement that the applicant 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; 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 (37 C.F.R. §2.45(a)(4)(v)(B); see 15 U.S.C. §§1051(b)(3)(B),  1054). For a certification mark application, the required verified statement is not part of the international registration on file at the International Bureau of the World Intellectual Property Organization ("IB"); therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(b)(2).

See TMEP §1306.02(b)(ii) for additional information regarding the requirements for the verified statement in applications under §66(a) of the Trademark Act.

A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c). 37 C.F.R. §§2.35(a), 2.45(c). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application may be transformed into an application under §1 or §44.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It may not be added or substituted as a basis in an application originally filed under §1 or §44.

Under 15 U.S.C. §1141g, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:

  • (1) The request for extension of protection contains a claim of priority;
  • (2) The request for extension of protection specifies the filing date, serial number, and the country of the application that forms the basis for the claim of priority; and
  • (3) The date of international registration, or the date of the recordal of the subsequent designation requesting an extension of protection to the United States, is not later than six months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

See Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement & the Madrid Protocol, B.II.07.32.

1306.02(a)(vi)    Multiple Bases, Amending/Deleting the Basis, Review of Basis Prior to Publication/Issue

The procedures for examining an application with multiple bases, amending or deleting a basis, and reviewing the basis information prior to publication or issuance of a registration are the same as for trademark and service mark applications. See TMEP §806.02 for information about multiple bases, §806.03 regarding amending the basis, §806.04 regarding deleting a basis, and §806.05 regarding review of a basis prior to publication or issue.

1306.02(b)    Verification of Certain Statements

An application must include certain statements that are verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §1051(a)(3),  (b)(3); 37 C.F.R. §§2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B), 2.193(e)(1); see TMEP §1306.02(b)(i)-(ii).

In an application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01–804.01(b) regarding the form of the oath or declaration, §1306.02(b)(i) regarding the essential allegations required to verify an application for registration of a mark, and §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

In §66(a) applications, this particular verified statement is not part of the international registration on file at the IB; therefore the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(a)(4)(v)(B); TMEP §§804.05, 1306.02(b)(ii), 1904.01(c).

1306.02(b)(i)    Statements 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 37 C.F.R. §2.45(a)(4)(i)–(iv). See 15 U.S.C. §§1051(a)(3), 1051(b)(3), 1126. 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 §1306.02(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1306.02(a)–(a)(iv) for further information regarding filing-basis requirements, including the verified statement.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B)   and 1051(b)(3)(C), verification of an application for registration must include an allegation that "to the best of the verifier’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. §2.45(a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C).

Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(a)(4)(i)(F). If this verified statement is not filed with the original application, it 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. 37 C.F.R. §2.45(b)(2).

Bona Fide Intention and Entitlement to Exercise Legitimate Control. 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, and is entitled, to exercise legitimate control over the use of the mark in commerce, and 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. 37 C.F.R. §2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C). If this verified statement is not filed with the original application, it must also allege that, 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. 37 C.F.R. §2.45(b)(2).

Ownership. 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 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. 37 C.F.R. §2.45(a)(4)(i)(F); see 15 U.S.C. §1051(a)(3)(A),  (a)(3)(D).

Concurrent Use. The verification for concurrent use should 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. 37 C.F.R. §2.45(d); see 15 U.S.C. §1051(a)(3)(D).  See TMEP §1207.04(d)(ii) for concurrent use application requirements for a certification mark.

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 mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce] . . .," or wording that disavows the substance of the declaration, are unacceptable.

Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will 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 (in an application based on §1(a)); 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 (in an application based on §1(b) or §44). 37 C.F.R. §2.45(b)(1). See TMEP §804.03 for information regarding time between execution and filing of documents.

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.

1306.02(b)(ii)    Statements Required in Verification of Application for Registration - §66(a) Application

The verified statement for a certification mark in a §66(a) application is not part of the international registration on file at the IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.45(b)(2).

In applications under §66(a) of the Act, the applicant must amend the request for extension of protection to the United States to include a declaration that the applicant 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. 37 C.F.R. §2.45(a)(4)(v)(B). The declaration must include a statement that the signatory is properly authorized to execute the declaration on behalf of the applicant and that to the best of his/her knowledge and belief, that 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/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. §2.45(a)(4)(v)(B); see 15 U.S.C.  §1141(f)(a).

Additionally, because the verified statement cannot be filed with the initial application, the verified statement must also allege that, 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. 37 C.F.R. §2.45(b)(2).

See TMEP §1306.02(a)(v) for further information regarding filing-basis requirements, including the verified statement.

1306.02(c)    Identification of Goods and Services of the Authorized Users

The identification of goods or services in a certification mark application must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certification mark. This is consistent with the requirement that the owner of a certification mark not produce the goods or perform the services in connection with which the mark is used. See 37 C.F.R. §2.45(a)(4)(i)(C), (a)(4)(ii)(B), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v)(A). The certification activities of the certifier are described in the certification statement, not in the identification of goods/services. For an explanation of the certification statement, see TMEP § 1306.03(a).

In a certification mark application, the goods or services that are certified may be identified less specifically than in an application for registration of a trademark or service mark. Ordinarily, it is only necessary to indicate the general category of goods and services, such as the following: food, agricultural commodities, electrical products, clothing, printed material, insurance services, machinery repair, or restaurant services. However, sufficient information must be provided to enable a comparison of goods/services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. If the certification program itself is limited to specific items of goods or services, for example, wine, wood doors, or bakery machinery, then the identification in the application must also reflect this level of specificity.

The terms "certification," "certify," or "certifies" should not be included in the identification, which should be limited only to the goods or services, as in the following examples:

Building and construction materials and products, in International Class A

Medical services in the field of addiction medicine and treatment, in International Class B

Furthermore, the identification in an application for a geographic certification mark need not refer to the specific geographic origin of the goods or services. For example, the identification of goods for the geographic certification mark WISCONSIN REAL CHEESE is "dairy products, namely, cheese."

1306.02(d)    Classification

Section 1 and Section 44 Applications

In applications to register certification marks, all goods are classified in U.S. Class A and all services are classified in U.S. Class B. 37 C.F.R. §6.3. Both U.S. Classes A and B (but not any other classes) may be included in one application. See TMEP §§1403–1403.06 regarding multiple-class applications.

NOTE: When the Trademark Act of 1946 went into effect, the goods and services for which certification marks were registered were classified in the regular numbered international classes for goods and services. It was later concluded that this was not reasonable, because a certification mark is commonly used on a great variety of goods and services, and the specialized purpose of these marks makes it unrealistic to divide the goods and services into the competitive groups that the regular classes represent. The change to classification in U.S. Classes A and B for certification marks was made by amendment to the Trademark Rules on August 15, 1955.

Section 66(a) Applications

In a §66(a) application, classification is determined by the International Bureau of the World Intellectual Property Organization (IB), in accordance with the Nice Agreement. Classes A and B come from the old United States classification system (see TMEP §1401.02) and are not included in the international classification system. In a §66(a) application, the international classification of goods/services may not be changed from the classification assigned to the goods/services by the IB. See TMEP §§1401.03(d), 1904.02(b). Accordingly, if the mark in a §66(a) application is identified as a certification mark, the USPTO will not reclassify it into U.S. Class A or B. However, the examining attorney must ensure that the applicant complies with all other U.S. requirements for certification marks, regardless of the classification assigned by the IB.