1304.02(b) Verification of Certain Statements
See TMEP §1303.01(b) for information about the verification of certain statements for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, except for the statement regarding the applicant’s bona fide intent and entitlement to exercise legitimate control and the applicant’s ownership statement.
1304.02(b)(i) Statements Required in Verification of Application for Registration - §1 or §44 Application
See TMEP §1303.01(b)(i) for information about the requirements for the verified statement in applications under §1 or §44 for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks. The two exceptions are the following requirements, which differ only in form.
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 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 in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B). 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. §2.44(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 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 in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(i)(D); see 15 U.S.C. §§1051(a)(3)(A), 1051(a)(3)(D).
See TMEP §§1304.02(a) - (a)(iv) for further information regarding filing-basis requirements, including the verified statement.
1304.02(b)(ii) Statements Required in Verification of Application for Registration - §66(a) Application
For a collective membership mark in a §66(a) application, the 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. §2.44(b)(2).
In applications under §66(a) of the Act, the applicant must supplement 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 to indicate membership in the collective organization. 37 C.F.R. §2.44(a)(4)(v). 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, 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 in connection with the collective membership organization of such other person, firm, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. 2. 44(a)(4)(v); see 15 U.S.C. §1141(f)(a).
Additionally, because the verified statement is not included 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. §2.44(b)(2).
See TMEP § 1303.01(a)(v) for further information regarding filing-basis requirements, including the verified statement.