1613.09 Goods/Services/Classes Set Forth in §71 Affidavit or Declaration
1613.09(a) Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference
Under 15 U.S.C. §1141k(b) and 37 C.F.R §7.37(a)(5)(i), the affidavit or declaration must specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed. See TMEP §1613.10 regarding use in commerce and §1613.11 regarding excusable nonuse. The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., "all goods/all services/or the nature of the collective membership organization listed in the existing registration" or "all goods/services/classes listed in the registration except... [specifying the goods/services/classes not covered by the affidavit or declaration]"). Incorporation by reference is recommended to avoid inadvertent omissions.
If the holder is alleging use with respect to some of the goods/services/classes and excusable nonuse for other goods/services/classes, the holder must clearly indicate which goods/services/classes are in use and which goods/services/classes are not in use.
1613.09(b) Deletion of Goods/Services/Classes
If the holder of the registration intends to delete goods/services/classes from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R §7.37(a)(5)(ii). Once a holder expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted.
If the holder of the registration deletes goods/services/classes from the registration after submission and prior to acceptance of the §71 affidavit or declaration through TEAS, the holder must pay the relevant per class fee in 37 C.F.R §7.6(a)(6)(iv). 37 C.F.R §7.37(c).
1613.09(c) Failure to List All Goods/Services/Collective Membership Organization in Registration
An affidavit or declaration that fails to list or incorporate by reference all the goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of intent to delete the omitted goods/services/classes, is deficient. In such case, the Post Registration staff will issue an Office action requiring the party to either (1) 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/collective membership organization or (2) state that the omitted goods/services/classes should be deleted.
If the holder files a substitute or supplemental affidavit or declaration adding the omitted goods/services/ collective membership organization, the holder must verify that the mark was in use in commerce on or in connection with the goods/services/collective membership organization during the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k. This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the deadline set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act. See TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the holder 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/collective membership organization within the period for response to the Office action ( see TMEP §1613.16), the omitted goods/services/classes will be deleted from the registration.
1613.09(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 §71 affidavit or declaration.