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 Regs. Rule 9(4)(a)(iv).

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.