U.S. Patent and Trademark Office, Commerce § 2.34

(1) A person with legal authority to slash marks in the signature block on bind the applicant; or the electronic submission; or (2) A person with firsthand knowl- (2) Sign the verified statement using edge of the facts and actual or implied some other form of electronic signa- authority to act on behalf of the appli- ture specified by the Director. cant; or (e) In an application under section (3) An attorney as defined in § 10.1() 66(a) of the Act, the verified statement of this chapter who has an actual or is part of the international registration implied written or verbal power of at- on file at the International Bureau. torney from the applicant. The verified statement must allege that: (b)(1) In an application under section (1) The applicant/holder has a bona 1(a) of the Act, the verified statement fide intention to use the mark in com- must allege: merce that the United States Congress That the applicant has adopted and is using can regulate on or in connection with the mark shown in the accompanying draw- the goods/services identified in the ing; that the applicant believes it is the international application/subsequent owner of the mark; that the mark is in use designation; in commerce; that to the best of the declar- (2) The signatory is properly author- ant’s knowledge and belief, no other person ized to execute this declaration on be- has the right to use the mark in commerce, half of the applicant/holder; either in the identical form or in such near resemblance as to be likely, when applied to (3) The signatory believes the appli- the goods or services of the other person, to cant/holder to be entitled to use the cause confusion or mistake, or to deceive; mark in commerce that the United that the specimen shows the mark as used on States Congress can regulate on or in or in connection with the goods or services; connection with the goods/services and that the facts forth in the applica- identified in the international applica- tion are true. tion/registration; and (2) In an application under section (4) To the best of his/her knowledge 1(b) or section 44 of the Act, the and belief, no other person, firm, cor- verified statement must allege: poration, association, or other legal en- tity has the right to use the mark in That the applicant has a bona fide intention commerce that the United States Con- to use the mark shown in the accompanying gress can regulate, either in the iden- drawing in commerce on or in connection tical form thereof or in such near re- with the specified goods or services; that the semblance thereto as to be likely, when applicant believes it is entitled to use the used on or in connection with the mark in commerce; that to the best of the declarant’s knowledge and belief, no other goods/services of such other person, person has the right to use the mark in com- firm, corporation, association, or other merce, either in the identical form or in such legal entity, to cause confusion, or to near resemblance as to be likely, when ap- cause mistake, or to deceive. plied to the goods or services of the other [64 FR 48918, Sept. 8, 1999, as amended 67 FR person, to cause confusion or mistake, or to 79522, Dec. 30, 2002; 68 FR 55762, Sept. 26, 2003] deceive; and that the facts set forth in the application are true. § 2.34 Bases for filing. (c) If the verified statement is not (a) The application must include one filed within a reasonable time after it or more of the following five filing is signed, the Office may require the bases: applicant to submit a substitute (1) Use in commerce under section 1(a) verification or declaration under § 2.20 of the Act. The requirements for an ap- of the applicant’s continued use or plication based on section 1(a) of the bona fide intention to use the mark in Act are: commerce. (i) The trademark owner’s verified (d) Where an electronically trans- statement that the mark is in use in mitted filing is permitted, the person commerce on or in connection with the who signs the verified statement must goods or services listed in the applica- either: tion. If the verification is not filed (1) Place a comprised of num- with the initial application, the bers and/or letters between two forward verified statement must allege that the

235

VerDate Aug<04>2004 03:44 Aug 31, 2005 Jkt 205137 PO 00000 Frm 00245 Fmt 8010 Sfmt 8010 Y:\SGML\205137.XXX 205137 § 2.34 37 CFR Ch. I (7–1–05 Edition)

mark was in use in commerce on or in issue, the applicant must submit a true connection with the goods or services copy, a photocopy, a certification, or a listed in the application as of the appli- certified copy from the country of ori- cation filing date; gin to establish that the foreign reg- (ii) The date of the applicant’s first istration has been renewed and will be use of the mark anywhere on or in con- in force at the time the United States nection with the goods or services; registration will issue. If the foreign (iii) The date of the applicant’s first registration is not in the English lan- use of the mark in commerce as a guage, the applicant must submit a trademark or service mark; and translation. (iv) One specimen showing how the (4) Claim of priority, based upon an ear- applicant actually uses the mark in lier-filed foreign application, under sec- commerce. tion 44(d) of the Act. The requirements (2) Intent-to-use under section 1(b) of for an application under section 44(d) of the Act. In an application under section the Act are: 1(b) of the Act, the applicant must (i) A claim of priority, filed within verify that it has a bona fide intention six months of the filing date of the for- to use the mark in commerce on or in eign application. Before publication or connection with the goods or services registration on the Supplemental Reg- listed in the application. If the ister, the applicant must either: verification is not filed with the initial (A) Specify the filing date, serial application, the verified statement number and country of the first regu- must allege that the applicant had a larly filed foreign application; or bona fide intention to use the mark in (B) State that the application is commerce on or in connection with the based upon a subsequent regularly filed goods or services listed in the applica- application in the same foreign coun- tion as of the filing date of the applica- try, and that any prior-filed applica- tion. tion has been withdrawn, abandoned or (3) Registration of a mark in a foreign otherwise disposed of, without having applicant’s country of origin under sec- been laid open to public inspection and tion 44(e) of the Act. The requirements without having any rights outstanding, for an application under section 44(e) of and has not served as a basis for claim- the Act are: ing a right of priority. (i) The applicant’s verified statement (ii) The applicant’s verified state- that it has a bona fide intention to use ment that it has a bona fide intention the mark in commerce on or in connec- to use the mark in commerce on or in tion with the goods or services listed in connection with the goods or services the application. If the verification is listed in the application. If the not filed with the initial application, verification is not filed with the initial the verified statement must allege that application, the verified statement the applicant had a bona fide intention must allege that the applicant had a to use the mark in commerce as of the bona fide intention to use the mark in filing date of the application. commerce as of the filing date of the (ii) A true copy, a photocopy, a cer- application. tification, or a certified copy of a reg- (iii) Before the application can be ap- istration in the applicant’s country of proved for publication, or for registra- origin showing that the mark has been tion on the Supplemental Register, the registered in that country, and that applicant must establish a basis under the registration is in full force and ef- section 1(a), section 1(b) or section fect. The certification or copy of the 44(e) of the Act. foreign registration must show the (5) Extension of protection of an inter- name of the owner, the mark, and the national registration under section 66(a) goods or services for which the mark is of the Act. In an application under sec- registered. If the foreign registration is tion 66(a) of the Act, the international not in the , the appli- application or subsequent designation cant must submit a translation. requesting an extension of protection (iii) If the record indicates that the to the United States must contain a foreign registration will expire before signed declaration that meets the re- the United States registration will quirements of § 2.33.

236

VerDate Aug<04>2004 03:44 Aug 31, 2005 Jkt 205137 PO 00000 Frm 00246 Fmt 8010 Sfmt 8010 Y:\SGML\205137.XXX 205137 U.S. Patent and Trademark Office, Commerce § 2.38

(b)(1) In an application under section basis, unless there is contradictory evi- 1 or section 44 of the Act, an applicant dence in the record, and the applica- may claim more than one basis, pro- tion will retain the original filing date, vided the applicant satisfies all re- including a priority filing date under quirements for the bases claimed. How- section 44(d), if appropriate. ever, the applicant may not claim both (4) If an applicant properly claims a sections 1(a) and 1(b) for the identical section 44(d) basis in to an- goods or services in the same applica- other basis, the applicant will retain tion. the priority filing date under section (2) In an application under section 1 44(d) no matter which basis the appli- or section 44 of the Act, if an applicant cant perfects. claims more than one basis, the appli- (5) The applicant may add or sub- cant must list each basis, followed by stitute a section 44(d) basis only within the goods or services to which that the six-month priority period following basis applies. If some or all of the the filing date of the foreign applica- goods or services are covered by more tion. than one basis, this must be stated. (6) When the applicant adds or sub- (3) A basis under section 66(a) of the stitutes a basis, the applicant must list Act cannot be combined with any other each basis, followed by the goods or basis. services to which that basis applies. (c) The word ‘‘commerce’’ means (7) When the applicant deletes a commerce that Congress may lawfully basis, the applicant must also delete regulate, as specified in section 45 of any goods or services covered solely by the Act. the deleted basis. [64 FR 48919, Sept. 8, 1999, as amended at 67 (8) Once an applicant claims a section FR 79522, Dec. 30, 2002; 68 FR 55763, Sept. 26, 1(b) basis as to any or all of the goods 2003] or services, the applicant may not amend the application to seek registra- § 2.35 Adding, deleting, or substituting tion under section 1(a) of the Act for bases. those goods or services unless the ap- (a) In an application under section plicant files an allegation of use under 66(a) of the Act, an applicant may not section 1(c) or section 1(d) of the Act. add, substitute or delete a basis, unless [68 FR 55763, Sept. 26, 2003] the applicant meets the requirements for transformation under section 70(c) § 2.36 Identification of prior registra- of the Act and § 7.31 of this chapter. tions. (b) In an application under section 1 Prior registrations of the same or or section 44 of the Act: similar marks owned by the applicant (1) Before publication for opposition, should be identified in the application. an applicant may add or substitute a basis, if the applicant meets all re- § 2.37 Description of mark. quirements for the new basis, as stated A description of the mark may be in- in § 2.34. The applicant may delete a cluded in the application and must be basis at any time. included if required by the trademark (2) After publication, an applicant examining attorney. may add or substitute a basis in an ap- plication that is not the subject of an [68 FR 55763, Sept. 26, 2003] inter partes proceeding before the Trademark Trial and Appeal Board, § 2.38 Use by predecessor or by related but only with the express permission of companies. the Director, after consideration on pe- (a) If the first use of the mark was by tition. Republication will be required. a predecessor in title or by a related The amendment of an application that company (sections 5 and 45 of the Act), is the subject of an inter partes pro- and the use inures to the benefit of the ceeding before the Board is governed by applicant, the dates of first use § 2.133(a). (§§ 2.34(a)(1) (ii) and (iii)) may be as- (3) When an applicant substitutes one serted with a statement that first use basis for another, the Office will pre- was by the predecessor in title or by sume that there was a continuing valid the related company, as appropriate.

237

VerDate Aug<04>2004 03:44 Aug 31, 2005 Jkt 205137 PO 00000 Frm 00247 Fmt 8010 Sfmt 8010 Y:\SGML\205137.XXX 205137