1613.21    Additional Requirements for §71 Affidavits or Declarations Pertaining to Certification Marks

In addition to the requirements specified in 37 C.F.R. §7.37(a)-(h) and TMEP §§1613.06–1613.19, a complete §71 affidavit or declaration pertaining to a certification mark must include:

  • (1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration (see 37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1613.21(a));
  • (2) A statement that the holder is exercising legitimate control over the use of the mark in commerce (see TMEP §1613.21(b));
  • (3) A statement specifying what the holder is certifying about the goods or services in the registration (see 37 C.F.R. §2.45(a)(4)(i)(A); TMEP §1613.21(c)); and
  • (4) A statement that the holder 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 holder (see 37 C.F.R. §2.45(a)(4)(i)(C); TMEP §1613.21(d)).

37 C.F.R. §7.37(j)-(j)(3).

1613.21(a)    Certification Standards

Submitting certification standards for the first time. In the first §71 affidavit or declaration filed with the USPTO, the holder must include a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R. §7.37(j)(1)(i).

The standards do not have to be originally created by the holder. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.

The standards must cover the full scope of the goods/services identified in the registration. For example, if the goods are "olive oil," but the standards are only for "extra virgin olive oil," the USPTO must require the holder to submit standards that cover all types of olive oil or to amend the identification to "extra virgin olive oil."

Certification standards submitted in prior filing. If the certification standards in use at the time of filing the §71 affidavit or declaration have not changed since the date they were previously submitted to the USPTO, the §71 affidavit or declaration must include a statement to that effect. 37 C.F.R. §7.37(j)(1)(ii). If the certification standards in use at the time of filing the §71 affidavit or declaration have changed since the date they were previously submitted to the USPTO, the §71 affidavit or declaration must include a copy of the revised certification standards. Id.

1613.21(b)    Exercising Legitimate Control

The holder must submit a verified statement that the holder is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §7.37(j)(2). If this verified statement is not filed with the original affidavit or declaration, it must also allege that the holder was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the §71 affidavit or declaration. See 37 C.F.R. §7.37(b), (j)(2).

1613.21(c)    Certification Statement

The §71 affidavit or declaration must include a statement specifying the characteristic, standard, or other feature that is being certified by the mark, also known as the certification statement. See 37 C.F.R. §§2.45(a)(4)(i)(A), 7.37(j)(3).

The registration as issued included a certification statement specifying what the holder will be certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(ii)(A). However, the §71 affidavit or declaration must include a certification statement specifying what the holder is certifying about the goods or services in the registration. See 37 C.F.R. §7.37(j)(3). This statement, if still accurate, must be included in the §71 affidavit or declaration using the present tense "is certifying," "certifies," or "is being certified." If what is being certified about the goods or services has changed, the holder must include in the §71 affidavit or declaration an amended certification statement specifying what the holder is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. See 37 C.F.R. §2.173(f); TMEP §1609.12.

See TMEP §1306.03(a) for general information about certification statements.

1613.21(d)    Statement that Holder is Not Engaged in Production or Marketing of the Goods/Services

The §71 affidavit or declaration must contain a statement that the holder 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 holder. 37 C.F.R. §7.37(j)(3); see 37 C.F.R. §2.45(a)(4)(i)(C). This statement does not have to be verified.