1301.01(a)(i) Performance of a Real Activity

A service must be a real activity.  A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service.  Similarly, a system, process, or method is not a service.   In re Universal Oil Prods. Co. , 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) ; In re Citibank, N.A. , 225 USPQ 612 (TTAB 1985) ; In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., 179 USPQ 317 (TTAB 1973).  See TMEP §1301.02(e) regarding marks that identify a system or process.

The commercial context must be considered in determining whether a real service is being performed.  For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services.  However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.

1301.01(a)(ii) For the Benefit of Others

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.   In re Reichhold Chems., Inc. , 167 USPQ 376 (TTAB 1970) ;  see TMEP §1301.01(b)(i) .  Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Assocs. , 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc. , 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Nw. Publ’g Co. , 212 USPQ 316, 317 (TTAB 1981) (stating that “[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark”).

Performing research and development, or other routine or expected activities, in the production or sale of one’s own goods, and not for the benefit of others, are not services for purposes of service-mark registration. See In re Dr. Pepper Co., 836 F.2d at 509, 5 USPQ2d at 1208 (“[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine’ in connection with the sale of one’s own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product. This interpretation is a refinement of the basic principle that the service for which registration is sought must be rendered to others.”); In re Florists’ Transworld Delivery, Inc. , 119 USPQ2d 1056, 1063 (TTAB2016) (finding applicant’s provision of information regarding flowers and conducting promotional events to promote the sale of its flowers did not constitute a separately registrable service, but were merely incidental to the production or sale of the goods).

Collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others.   See TMEP §1301.01(b)(iii) .

Offering shares of one’s own stock for investment is not a service because these are routine corporate activities that primarily benefit the applicant.   See TMEP §1301.01(b)(iv) .  On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees.   Am. Int’l Reins. Co. v. Airco, Inc. , 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978) .

Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee.   In re Universal Press Syndicate , 229 USPQ 638 (TTAB 1986).

See TMEP §1301.01(b)(vi) regarding conducting clinical trials.

1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney must first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product).  The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides.   In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979). The identification of goods/services, specimen of use, or other information in the application record may indicate whether the activity identified in the application is a separately registrable service. If necessary, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b) , to determine if the activity constitutes a service as contemplated by the Trademark Act. See TMEP §814 .

For example, operating a grocery store is clearly a service.  Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service.   See TMEP §1301.01(b)(v) .

Conducting clinical trials for one’s own pharmaceuticals is generally considered to be a normally expected and routine activity that is not separately registrable from the principal activity of providing the goods themselves because the U.S. Food and Drug Administration legally requires clinical trials as a prerequisite of pharmaceutical approval. See TMEP §1301.01(b)(vi) .

Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity.   See TMEP §1301.01(b)(i) .

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods generally does not constitute a separate service, because that activity is ancillary to the principal activity of providing the goods and normally expected in the trade.   See TMEP §1301.01(b)(ii) .

However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service.  The statute makes no distinction between primary, incidental, or ancillary services.   In re Universal Press Syndicate , 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc. , 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp. , 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Fin. Corp. , 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Tex. , 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co. , 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).

The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service.   In re Otis Eng’g Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., 136 USPQ at 95 (credit services offered only to customers of applicant’s retail store found to be a service).

The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered.   In re Forbes Inc. , 31 USPQ2d 1315 (TTAB 1994) ; In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).

Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service.   See In re Mitsubishi Motor Sales of Am. Inc. , 11 USPQ2d 1312, 1314-15 (TTAB 1989) ; In re Universal Press Syndicate, 229 USPQ at 640; In re Congoleum Corp., 222 USPQ at 453-54; In re C.I.T. Fin. Corp ., 201 USPQ at 126.  However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc. , 169 USPQ 505 (TTAB 1971) .  Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service.   Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).

1301.01(b)(i) Contests and Promotional Activities

It is well settled that the promotion of one’s own goods is not a service.   In re Radio Corp. of Am. , 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp. , 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).

However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service.   In re U.S. Tobacco Co. , 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc. , 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).

Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest.  Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc. , 179 USPQ 126 (TTAB 1973) ; In re Johnson Publ’g Co. , 130 USPQ 185 (TTAB 1961) .  However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field.   In re Congoleum Corp. , 222 USPQ 452 (TTAB 1984) .

A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service.   In re Miss Am. Teen-Ager, Inc. , 137 USPQ 82 (TTAB 1963) .   See TMEP §1402.11 .

See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.

1301.01(b)(ii) Warranty or Guarantee of Repair

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service, because that activity is ancillary to and normally expected in the trade.   In re Orion Research Inc. , 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is not separately offered, promoted, or charged for is not a service); In re Lenox, Inc. , 228 USPQ 966 (TTAB 1986) (lifetime warranty that is not separately offered, promoted, or charged for is not a service).

However, a warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.   In re Mitsubishi Motor Sales of Am., Inc. , 11 USPQ2d 1312 (TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service program held to be a service, where applicant’s package included features that were unique and would not normally be expected in the industry); In re Sun Valley Waterbeds Inc. , 7 USPQ2d 1825 (TTAB 1988) (retailer’s extended warranty for goods manufactured by others held to be a service, where the warranty is considerably more extensive than that offered by others); In re Otis Eng’g Corp. , 217 USPQ 278 (TTAB 1982) (non-mandatory quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment, where the services were separately charged for, the goods were offered for sale without services, and the services were not merely a time limited manufacturer’s guarantee).

Providing warranties to consumers and retailers on power-operated outdoor products was held to be a registrable service where the warranty covered goods manufactured by applicant but sold under the marks of third-party retailers.  Noting that none of applicant’s trademarks appeared on the goods or identified applicant as the source of the goods, the Board found that the third-party retailers rather than applicant would be regarded as the manufacturer of the products.  Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, applicant’s warranty service would not be regarded as merely an inducement to purchase its own goods.  The Board also noted that applicant’s activities constitute a service to the third-party retailers, because applicant’s provision of warranties avoids the need of the retailer itself to provide a warranty.   In re Husqvarna Aktiebolag , 91 USPQ2d 1436 (TTAB 2009) .

When an applicant offers a warranty on its own goods or services, the identification of services must include the word “extended,” or similar wording, to indicate that the warranty is “qualitatively different” from a warranty normally provided ancillary to the sale of the applicant’s goods/services.  When an applicant offers a warranty on third-party goods, the identification of services must so indicate.   See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming that the USPTO has the discretion to determine whether and how a trademark registration should include a more particularized identification of the goods for which a mark is used).

The identification of services must also specify the item(s) that the extended warranty covers, e.g., “providing extended warranties on television sets.” Id.

Extended warranty services are classified in Class 36.

1301.01(b)(iii) Publishing One’s Own Periodical

The publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others.   In re Billfish Int’l Corp. , 229 USPQ 152 (TTAB 1986) (activities of collecting, distributing, and soliciting information relating to billfishing tournaments for a periodical publication not a separate service, because these are necessary preliminary activities that a publisher must perform prior to publication and sale of publication); In re Alaska Nw. Publ’g Co. , 212 USPQ 316 (TTAB 1981) (title of magazine section not registrable for magazine publishing services, because the activities and operations associated with designing, producing, and promoting applicant’s own product are ancillary activities that would be expected by purchasers and readers of any magazine); In re Landmark Commc’ns, Inc. , 204 USPQ 692 (TTAB 1979) (title of newspaper section not registrable as service mark for educational or entertainment service, because collected articles, stories, reports, comics, advertising, and illustrations are indispensable components of newspapers without which newspapers would not be sold); In re Television Digest, Inc. , 169 USPQ 505 (TTAB 1971) (calculating advertising rates for a trade publication not a registrable service, because this is an integral part of the production or operation of any publication).

However, providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.   In re Forbes Inc. , 31 USPQ2d 1315 (TTAB 1994) (“providing advertising space in a periodical” held to be a registrable service, where the advertising services were rendered to a different segment of the public under a different mark than the mark used to identify applicant’s magazines); In re Home Builders Ass’n of Greenville , 18 USPQ2d 1313 (TTAB 1990) (real estate advertising services rendered by soliciting advertisements and publishing a guide comprising the advertisements of others held to be a registrable service, where advertising was found to be the applicant’s primary activity, and the customers who received the publication were not the same as those to whom the advertising services were rendered).

1301.01(b)(iv) Soliciting Investors

Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant. In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985).  Similarly, soliciting investors in applicant’s own partnership is not a registrable service.   In re Integrated Res. , Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization).  On the other hand, investing the funds of others is a registrable service that primarily benefits others.   In re Venture Lending Assocs. , 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).

In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public.  The court distinguished American Int’l Reinsurance Co., v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), in which offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.

1301.01(b)(v) Informational Services Ancillary to the Sale of Goods

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate informational service.   In re Moore Bus. Forms Inc. , 24 USPQ2d 1638 (TTAB 1992) (paper manufacturer who rates the recycled content and recyclability of its own products is merely providing information about its goods, not rendering a service to others); In re Reichhold Chems., Inc. , 167 USPQ 376 (TTAB 1970) (“promoting the sale and use of chemicals” is not a registrable service, where applicant is merely providing “technical bulletins” that contain information about its own products); Ex parte Armco Steel Corp. , 102 USPQ 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a consulting service, because it is an ordinary activity that is normally expected of a manufacturer selling goods); Ex parte Elwell-Parker Elec. Co. , 93 USPQ 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods not a service).  However, an applicant’s free hairstyling instructional “parties” were found to be a service, because conducting parties goes beyond what a seller of wigs would normally do in promoting its goods.   In re Heavenly Creations, Inc. , 168 USPQ 317 (TTAB 1971).

1301.01(b)(vi) Clinical Trials

Because conducting clinical trials necessary for governmental approval of one’s own pharmaceuticals generally is a normally expected, routine, and legally required activity in connection with the sale of pharmaceuticals, it is not a separate registrable service done primarily for the benefit of others. Cf. In re Dr Pepper Co., 836 F.2d 508, 509, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) (“[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine’ in connection with the sale of one’s own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product.”); In re Landmark Commc’ns, Inc ., 204 USPQ 692, 695 (TTAB 1979) (noting that “to be separately recognizable, as services, an applicant’s activity must be qualitatively different from anything necessarily done in connection with the sale of goods”).

Pharmaceutical companies are legally required to conduct clinical trials before pharmaceutical preparations can be approved for human use. See U.S. Food & Drug Admin., Development & Approval Process | Drugs , https://www.fda.gov/drugs/development-approval-process-drugs (accessed Dec. 19, 2019); see also 21 C.F.R. §312.21 (explaining the three phases of clinical trials for a previously untested drug). An activity or process that is necessary or legally required for an applicant to be able to provide the main product or service is not separable from the main product or service. See In re Orion Research, Inc ., 523 F.2d 1398, 1400, 187 USPQ 485, 486-87 (C.C.P.A. 1975) (holding a warranty to repair or replace one’s own merchandise to be a normally expected and legally required duty of a merchandiser and not a separate and registrable service); In re Television Digest, Inc ., 169 USPQ 505, 508 (TTAB 1971) (noting that providing a schedule of advertising rates is necessary for publishing a directory or magazine and is not a separate service). Therefore, since conducting a clinical trial is a legally required prerequisite to pharmaceutical sales, when this service is conducted by a pharmaceutical company for its own goods, it is an expected and mandated activity not separately registrable from the principal activity of providing the pharmaceutical preparations themselves.

Accordingly, when registration is sought for a mark used in connection with the conducting of pharmaceutical clinical trials, the examining attorney must ascertain whether the services are provided for the pharmaceuticals of others. If the record is unclear, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b) , to clarify whether the pharmaceutical clinical trials are registrable services as contemplated by the Trademark Act. See TMEP §814 .

1301.04(f)(i) Show the Mark

The mark on the drawing must be a substantially exact representation of the mark shown on the specimen. See TMEP §§807.12–807.12(a)(iii) and §§807.12(d)–807.12(e) regarding agreement of the mark on the drawing and on the specimen. Furthermore, the designation must appear sufficiently prominent on the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers as a mark. See In re Dell Inc ., 71 USPQ2d 1725, 1729 (TTAB 2004) (finding a mark “sufficiently prominent” even though it was “shown in a smaller type size than other words appearing on the webpage,” given that it appeared “in a bullet listing of information about the product,” and was placed “at the beginning of a line and [was] followed by the ‘TM’ trademark indicator”); TMEP §904.03(i)(B)(1) . Compare In re Quantum Foods, Inc ., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing a mark as “prominently displayed” on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page) with In re Osterberg , 83 USPQ2d 1220, 1223 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). For instance, if shown in the same font, size, and color as the surrounding text on the specimen, the designation may not be perceived as a source indicator. See In re Osterberg, 83 USPQ2d at 1223.

1301.04(f)(ii) Direct Association Between the Mark and the Services

The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2) ; In re Universal Oil Prods. Co ., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) (“The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor.”); see also In re JobDiva, Inc. ,843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) (noting that the question of whether consumers would associate registrant’s mark with the identified services, when each step of the services is performed by software, is a factual determination involving case-specific factors); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (“The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.’”); In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (“A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.”); In re Johnson Controls, Inc ., 33 USPQ2d 1318, 1320 (TTAB 1994) (“While the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.”). Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457. What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is an advertising specimen or a rendering specimen.

Mark Used in Advertising: For specimens showing the mark used in advertising the identified services, in order to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. See In re WAY Media, Inc., 118 USPQ2d at 1698; In re Monograms Am., Inc ., 51 USPQ2d 1317, 1318 (TTAB 1999). While the services need not be stated word for word, a “sufficient reference” to the services themselves or a general reference to the trade, industry, or field of use is required. See id.; In re Ralph Mantia Inc ., 54 USPQ2d 1284, 1286 (TTAB 2000) (reversing the specimen refusal since the term “design” appeared on applicant’s letterhead stationery, envelope, and business cards and stating “[i]t is not necessary that the specific field of design, i.e., commercial art, also appear [on the specimen]. Here, the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant’s commercial art services.”); In re Monograms Am., Inc., 51 USPQ2d at 1318; see also TMEP §1301.04(h) . However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co. , 111 USPQ2d 2080, 2082 (TTAB 2011) ; see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i) regarding examples of acceptable specimens.

Mark Used in Rendering: For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc ., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that “the requirements specific to specimens which are advertising are not applicable” and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed “the mark as it appears on a computer terminal in the course of applicant’s rendering of the service” and noting that “purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal”). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698. In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. See TMEP §1301.04(i) , Example 17 (CASHFLOW UNITS).

The applicant may respond to a specimen refusal for failing to show direct association by explaining the nature of the mark’s use or the manner in which the services are advertised or rendered. In re Metriplex, Inc ., 23 USPQ2d at 1316 (finding the submitted specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). With respect to a particular industry’s typical use of marks in relation to specific services, it may also be helpful for the applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice. See TMEP §1301.04(i) , Example 19 (design of speech bubbles).

The mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the mark and the services. See In re Johnson Controls, 33 USPQ2d at 1320. The specimen must associate the mark with the services such that the mark serves as a source identifier for those particular services. See In re WAY Media, Inc., 118 USPQ2d at 1698; cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) (“[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” (emphasis added)). The requisite direct mark-services association is present when the specimen makes a direct link or connection between the mark and the identified services. See TMEP §1301.04(i) , Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).

Thus, a specimen is unacceptable if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection. See, e.g., In re Metriplex, Inc. , 23 USPQ2d at 1316; In re Monograms Am., Inc., 51 USPQ2d at 1319. The mere fact that wording from the identification of services appears somewhere on the specimen may not necessarily suffice for the mark-services association or nexus, if there is nothing else to connect that wording to the mark, such as proximity or additional text that establishes the connection.

In assessing whether there is a direct association between the mark and services, the examining attorney should consider the specimen’s content, layout, and overall look and feel, as well as any description of the specimen and industry practice relating to service-mark usage in advertising and rendering the services.

1301.04(g)(i) Failure to Show the Mark Used in Commerce

Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, are the statutory bases for refusing a specimen that does not meet the requirements of an acceptable service-mark specimen; such specimen is not acceptable because it does not show the mark in “use in commerce.” For instance, if the mark does not appear on the specimen or the specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service-mark use in commerce in connection with the identified services.

The applicant’s response options include submitting an acceptable substitute specimen or, if appropriate, amending the application to a §1(b) filing basis. See TMEP §806.03(c) regarding amending filing basis from §1(a) to §1(b), and §904.07 regarding requirements for substitute specimens. In some cases, the applicant may respond by providing clarification of the nature of the original specimen submitted, or an explanation of the content of the original specimen, to justify its acceptability.

The examining attorney may consider any of the following facts and evidence properly made of record:

• declarations from persons with firsthand knowledge of the facts, with a sufficiently detailed explanation of how the mark is used in advertising or rendering the services or how the services are advertised or rendered;
• clarification of the specimen of record, such as an explanation of the nature, content, or context of use of the specimen (this explanation need not be verified with a declaration);
• evidence, such as declarations or industry-related periodicals, regarding industry practice with respect to how marks and services are promoted in advertising or how the services are rendered;
• additional background materials, such as printouts showing information on subsequent webpages from the applicant’s website or subsequent screenshots of an electronic device on which the services may be accessed, rendered, and experienced (this matter generally need not be verified with a declaration); and/or
• responses to any Trademark Rule 2.61(b) request for information.

If the specimen of record, the specimen description, the applicant’s response and explanations, and any additional proffered evidence are unpersuasive, a final refusal must issue, if the application is otherwise in condition for final. See 37 C.F.R. §2.63(b) ; TMEP §714.03 .

1301.04(g)(ii) Failure to Show the Mark Functioning as a Service Mark

A specimen may show the mark used as something other than a service mark for the identified services. For instance, it may show the mark used solely as a trade name, only as the name of a computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See TMEP §§1202.01 , 1202.03–1202.04 , 1301.02(a) , 1301.02(e)–1301.02(f) . In such cases, the mark does not function as a service mark to identify and distinguish the applicant’s services and indicate their source. Thus, a failure-to-function refusal should issue under Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051─1053,  1127 ; see TMEP §1301.04(e) . No specimen refusal should issue, however, if the mark identifies, for example, both a process and the identified services and the requisite mark-services association is present. See TMEP §§ 1301.02(e) , 1301.04(j) (Example 21 (LEADING EDGE TONERS)).

1301.04(h)(i) Letterhead

Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create a direct association between the mark and the services. See 37 C.F.R. §2.56(b)(2) . To create a direct association between the mark and services, the specimen does not have to spell out the specific nature or type of services; a general reference to the industry may be acceptable. In re Ralph Mantia Inc ., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word “Design” are acceptable evidence of use of mark for commercial art design services); In re Sw. Petro-Chem, Inc ., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for “consulting and advisory services relating to the making and using of lubricating oils and greases,” when used for letters in correspondence with customers).

Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms Am., Inc ., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimen showing the mark MONOGRAMS AMERICA and the wording “A Nationwide Network of Embroidery Stores” held insufficient to support registration for consulting services for embroidery stores).

If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d at 1319.

1301.04(h)(ii) Specimens for Entertainment Services

For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames , 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent).

A designation that identifies only the performer is not registrable as a service mark. See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks, and §§1202.09(a)–1202.09(a)(iii) regarding the registrability of names and pseudonyms of performing artists.

1301.04(h)(iii) Specimens for Technology-Related Services

Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-related services present special challenges because these services, and the terminology used to describe them, are continually evolving. In addition, any online activity entails the use of computer software, making it difficult to differentiate the various services provided online from the underlying technology used to provide them. As the Board has noted, “[a]lthough it may well be software that is generating the [services], in today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software.” In re Ancor Holdings, LLC , 79 USPQ2d 1218, 1221 (TTAB 2006); see also In re JobDiva, Inc. , 843 F.3d. 936, 121 USPQ2d 1122 (Fed. Cir. 2016). (“[I]f the software is hosted on JobDiva’s website such that the user perceives direct interaction with JobDiva during operation of the software, a user might well associate JobDiva’s marks with personnel ‘placement and recruitment’ services performed by JobDiva”).

It may be unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., “financial consulting in the field of retirement planning” in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., “providing temporary use of non-downloadable software for retirement planning” in Class 42), or both. Sometimes, an applicant that is actually providing non-downloadable software services (e.g., “providing temporary use of non-downloadable software for medical billing” in Class 42) misidentifies the services as the underlying function of the software (e.g., “medical billing” in Class 35). Similarly, the applicant may be using social networking websites to advertise non-social networking services (e.g., operating a pet store) and communicate with customers, leading the applicant to misidentify the services as “online social networking services” in Class 45.

Thus, a primary consideration in these instances is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website. See TMEP §1301.04(i) , Example 5 (ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14 (OUTERNAUTS).

Furthermore, some traditional services, and the associated terminology, may require fresh understanding and broader interpretation in the modern commercial environment. More and more traditional services are now offered online and, increasingly, multiple services are seamlessly integrated, creating difficulty in distinguishing the source of the services. For instance, television programs that were once provided only by broadcast television and cable outlets are now also accessible via streaming services like Netflix®, Hulu®, or YouTube®. Thus, typical service identification terms like “broadcasting,” “distribution,” and “transmission” have taken on new meaning in the modern marketplace. Thinking of traditional and other services more broadly and being cognizant of the current marketplace realities will also help the examining attorney determine whether the specimen properly shows use of the mark in direct association with the identified services.

When the nature of the services is not readily apparent from the information of record, such as the identification and specimen, the examining attorney may consult several resources for research and guidance, including: the notices and notes in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual); the applicant’s and third-party websites; technology dictionaries, encyclopedias, and trade and industry publications; and the Office of Trademark Classification Policy & Practice. Finally, the examining attorney may require the applicant to provide further information about the services, pursuant to Trademark Rule 2.61(b), 37 C.F.R. §2.61(b) .

1301.04(h)(iv) Common Forms of Specimens for Modern Technology-Related Services

As noted above, an applicant may submit a specimen that shows the mark as used in rendering the services. See 37 C.F.R. §2.56(b)(2) . These specimens are often submitted in connection with modern technology-related services, and common types are discussed below.

For specimens showing use of the mark in rendering the services, an explicit, textual reference to the services or their trade, industry, or field of use is not necessary, but an indication of the services sufficient to establish direct association between the mark and the services is required. The examining attorney must refuse the specimen if neither the specimen itself nor the description of the specimen provides sufficient information to decipher the nature of the services, determine the manner of use, and assess whether the necessary direct mark-services association exists. See TMEP §1301.04(g)(i) .

1303.01(a)(i) Use in Commerce – §1(a)

Under 15 U.S.C. §1051(a) ,  §1054 , and 37 C.F.R. §2.44(a)(4)(i) , to establish a basis under §1(a) of the Trademark Act, the applicant must:

• (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members ( 37 C.F.R. §2.44(a)(4)(i)(A) );
• (2) Specify the date of the applicant’s member’s first use of the mark anywhere on or in connection with the goods or services ( 37 C.F.R. §2.44(a)(4)(i)(B) );
• (3) Specify the date of the applicant’s member’s first use of the mark in commerce ( Id.);
• (4) Submit one specimen for each class, showing how a member uses the mark in commerce on the member’s goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member’s services ( 37 C.F.R. §§2.44(a)(4)(i)(C) , 2.56(b)(3) ); and
• (5) 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 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 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 members; and that the facts set forth in the application are true ( 15 U.S.C. §§1051(a)(3)(C) , 1054 ; 37 C.F.R. §2.44(a)(4)(i)(D)) . See TMEP §1303.01(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 that 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. §2.44(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) .

In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark or service mark for the goods or services covered by the collective trademark or collective service mark registration. See TMEP §1305 . The “anti-use-by-owner rule” of §4 of the Trademark Act does not apply to collective marks. See 15 U.S.C. §1054 .  The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the “anti-use-by-owner rule” in that section applies only to certification marks. Cf. Roush Bakery Prods. Co. v. F.R. Lepage Bakery Inc. , 4 USPQ2d 1401 (TTAB 1987) , aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989) (stating that the Board no longer believes that the anti-use-by-owner rule is applicable to trademarks).

The same mark may not be used both as a collective trademark or collective service mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f) ; TMEP § 1306.04(f) .

1303.01(a)(ii) Intent to Use – §1(b)

In an application based on intent to use, 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 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 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. §2.44(a)(4)(ii) ; see 15 U.S.C. §§1051(b)(3)(B) ,  1054 . See TMEP §1303.01(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) ,  which 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, and includes dates of use, the filing fee for each class, and one specimen evidencing use of the mark for each class. See 37 C.F.R. §§2.76(b) , 2.88(b) . 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 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 Chapter 1100 for additional information about intent-to-use applications.

1303.01(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. 37 C.F.R. §2.44(a)(4)(iv)(A) ; 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 §1303.01(a)(ii) regarding the requirements for a §1(b) basis.

Under 15 U.S.C. §§1054 ,  1126(d) , and 37 C.F.R. §2.44(a)(4)(iv) , the requirements for receipt of a priority filing date based on a previously filed foreign application are:

• (1) The applicant must file a claim of priority within six months of the filing date of the foreign application ( 37 C.F.R. §2.44(a)(4)(iv)(A) );
• (2) The applicant must: (a) 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. §2.44(a)(4)(iv)(A) ; see also Paris Convention Article 4(D)); and
• (3) 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 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 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. §2.44(a)(4)(iv)(B) ; see 15 U.S.C. §§1051(b)(3)(B) ,  1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)) . See TMEP § 1303.01(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. §2.44(a)(2)(iii) ; 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 §§1003–1003.08 for further information about §44(d) applications.

1303.01(a)(iv) Foreign Registration – §44(e)

Under 15 U.S.C. §§1054 ,  1126(e) , and 37 C.F.R. §2.44(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. §2.44(a)(4)(iii)(A) ; TMEP §§1004.01 , 1004.01(b)) ;
• (2) 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 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 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. §2.44(a)(4)(iii)(B) ; see 15 U.S.C. §§1051(b)(3)(B) ,  1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)) . See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act; and
• (3) 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 (15 U.S.C.  §1026(b), see 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 United States application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.44(a)(2)(iii) ; 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 §§1004–1004.02 for further information about §44(e) applications.

1303.01(a)(v) Extension of Protection of International Registration – §66(a)

Section 66(a) of the 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. §2.44(a)(4)(v) . The request must include a verified statement alleging 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/holder; 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 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. §2.44(a)(4)(v) ; see 15 U.S.C. §§1051(b)(3)(B) ,  1054 . For a collective trademark or collective service 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. §2.44(b)(2) .

See TMEP § 1303.01(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) of the Act. 37 C.F.R. §§2.35(a) , 2.44(c) . See TMEP §§1904.09–1904.09(b) 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. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.

Under 15 U.S.C. §1141g ,  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 Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2014) (“Guide to International Registration”), Para. B.II.07.32.

1303.01(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.

1303.01(b)(i) Statements Required in Verification of Application for Registration – §1 or §44 Application

The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in 37 C.F.R. §§2.44(a)(4)(i)–(iv) . See 15 U.S.C. §§1051(a)(3) ,  1051(b)(3) , 1054 , 1126 . These allegations are required regardless of whether the verification is in the form of an oath ( TMEP §804.01(a)) or a declaration ( TMEP §804.01(b)) . See TMEP §1303.01(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1303.01(a)–(a)(iv) for further information regarding filing-basis requirements, including the verified statement.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B)   and 1051(b)(3)(C) , verification of an application for registration must include an allegation that “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” The language in 37 C.F.R. §2.20 that “all statements made of [the signatory’s] own knowledge are true and all statements made on information and belief are believed to be true” satisfies this requirement. See 37 C.F.R. §§2.44(a)(4)(i)(D) , (a)(4)(ii) , (a)(4)(iii)(B) , (a)(4)(iv)(B) .

Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(a)(4)(i)(D) . If this verified statement is not filed with the original application, it must also allege that, as of the application filing date , the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.44(b)(2) .

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 on or in connection with the goods or services 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 on or in connection with the goods or services 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) ,  (a)(3)(D) .

Concurrent Use. The verification for concurrent use should be modified to indicate an exception that no other persons except members and the concurrent user(s) as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.44(d) ; see 15 U.S.C. §1051(a)(3)(D) .  See TMEP §1207.04(d)(ii) for concurrent use application requirements for a collective mark.

Affirmative, Unequivocal Averments Based on Personal Knowledge Required . The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as “the undersigned [person signing the declaration] has been informed that the mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce] . . .,” or wording that disavows the substance of the declaration, are unacceptable.

Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce (in an application based on §1(a)); or, 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 (in an application based on §1(b) or §44). 37 C.F.R. §2.44(b)(1) . See TMEP §804.03 for information regarding time between execution and filing of documents.

Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20 .

1303.01(b)(ii) Statements Required in Verification of Application for Registration – §66(a) Application

For a collective trademark or collective service 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) .

Thus, 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 on or in connection with the goods or services specified in the international application/subsequent designation. 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 on or in connection with the goods/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. 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.

1304.02(a)(i) Use in Commerce – §1(a)

Registration of a collective membership mark under §1(a) is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by its members. See In re Triangle Club of Princeton Univ. , 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members).

Under 15 U.S.C. §1051(a) , §1054 , and 37 C.F.R. §2.44(a)(4)(i) , to establish a basis under §1(a) of the Trademark Act, the applicant must:

• (1) Submit a statement specifying the nature of the applicant’s control over the use of the mark by the members ( 37 C.F.R. §2.44(a)(4)(i)(A) );
• (2) Specify the date of the applicant’s members’ first use of the mark anywhere to indicate membership in the collective organization ( 37 C.F.R. §2.44(a)(4)(i)(B) );
• (3) Specify the date of the applicant’s members’ first use of the mark in commerce ( Id.);
• (4) Submit one specimen for each class, showing how a member uses the mark in commerce to indicate membership in the collective organization ( 37 C.F.R. §§2.44(a)(4)(i)(C) , 2.56(b)(4) ); and
• (5) 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 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 on or in connection with the collective membership organization 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 members; and that the facts set forth in the application are true ( 15 U.S.C. §§1051(a)(3)(C) ,  1054 ; 37 C.F.R. §2.44(a)(4)(i)(D)) . See TMEP § 1304.02(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 that 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 not assert both §1(a) and §1(b) for the same collective membership organization in the same application. 37 C.F.R. §2.44(c) ; see TMEP §806.02(b) .

Nothing in the Trademark Act prohibits the use of the same mark as a collective membership mark by members and, also, as a trademark or service mark by the parent organization ( see TMEP §1303.01 ), but the same mark may not be used both as a collective membership mark and as a certification mark for the same goods or services. 37 C.F.R. §2.45(f) ; TMEP §1306.04(f) .

1304.02(a)(ii) Intent to Use – §1(b)

See TMEP §1303.01(a)(ii) for information regarding an intent-to-use filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(a)(iii) Foreign Priority – §44(d)

See TMEP §1303.01(a)(iii) for information regarding a §44(d) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(a)(iv) Foreign Registration – §44(e)

See TMEP §1303.01(a)(iv) for information regarding a §44(e) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with only two differences. First, the verified statement refers to a collective membership organization rather than goods or services. Second, the scope of the nature of the collective membership organization covered by the §44 basis in the U.S. application may not exceed the scope of the nature of the collective membership organization identified in the foreign application or registration. 37 C.F.R. §2.44(a)(2)(iii) ; TMEP §1402.01(b) .

1304.02(a)(v) Extension of Protection of International Registration – §66(a)

See TMEP §1303.01(a)(v) for information regarding a §66(a) filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, with the only difference being that the verified statement refers to a collective membership organization rather than goods or services.

1304.02(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.

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.

1304.03(b)(i) Matter that Does Not Function as a Membership Mark

Whether matter functions as a collective membership mark is determined by the specimen and evidence of record. It is the use of the mark to indicate membership, rather than the character of the matter composing the mark, that determines whether a term or other designation is a collective membership mark. See Ex parte Grand Chapter of Phi Sigma Kappa , 118 USPQ 467 (Comm’r Pats. 1958) (holding that use of Greek letter abbreviations on athletic jerseys did not function as collective membership marks indicating membership in Greek letter societies); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (holding that the design on a jewelry pin merely indicated longevity of service rather than membership in a collective organization). If a proposed mark does not function as a mark indicating membership, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051 ,  1052 , 1054 , 1127 . See TMEP §1304.03(b)(ii) regarding specimens showing use as degrees or titles. See TMEP §904.07(b) for information about matter that fails to function as a trademark or service mark.

1304.03(b)(ii) Degree or Title Designations

Professional, technical, educational, and similar organizations often adopt letters or similar designations to be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. When such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization, and registration as a membership mark must be refused. In re Int’l Inst. of Valuers, 223 USPQ 350 (TTAB 1984) (registration properly refused where use of the mark on specimen indicated award of a degree or title, and not membership in collective organization); see also In re Nat’l Soc’y of Cardiopulmonary Technologists, Inc. , 173 USPQ 511 (TTAB 1972) ; cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re Nat’l Ass’n of Purchasing Mgmt. , 228 USPQ 768 (TTAB 1986) ; In re Mortg. Bankers Ass’n of Am. , 226 USPQ 954 (TTAB 1985) .

If the proposed mark functions merely as a degree or title, the examining attorney must refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051 ,  1052 , 1054 , 1127 , on the ground that the matter does not function as a collective membership mark. See TMEP §1304.03(b)(i).

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)(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)(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 ,  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 Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2014) (“Guide to International Registration”) , Para. B.II.07.32.

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.

1306.02(b)(i) Statements Required in Verification of Application for Registration – §1 or §44 Application

The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in 37 C.F.R. §2.45(a)(4)(i)–(iv) . See 15 U.S.C. §§1051(a)(3) ,  1051(b)(3) , 1126 . These allegations are required regardless of whether the verification is in the form of an oath ( TMEP §804.01(a) ) or a declaration ( TMEP §804.01(b) ). See TMEP §1306.02(b)(ii) regarding the requirements for verification of a §66(a) application. See TMEP §§1306.02(a)–(a)(iv) for further information regarding filing-basis requirements, including the verified statement.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B)   and 1051(b)(3)(C) , verification of an application for registration must include an allegation that “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” The language in 37 C.F.R. §2.20 that “all statements made of [the signatory’s] own knowledge are true and all statements made on information and belief are believed to be true” satisfies this requirement. See 37 C.F.R. §2.45(a)(4)(i)(F) , (a)(4)(ii)(C) , (a)(4)(iii)(C) , (a)(4)(iv)(C) .

Use in Commerce and Exercising Legitimate Control. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and that the applicant is exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(a)(4)(i)(F) . If this verified statement is not filed with the original application, it must also allege that, as of the application filing date , the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce. 37 C.F.R. §2.45(b)(2) .

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 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. 37 C.F.R. §2.45(a)(4)(ii)(C) , (a)(4)(iii)(C) , (a)(4)(iv)(C) . 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. §2.45(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 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. 37 C.F.R. §2.45(a)(4)(i)(F) ; see 15 U.S.C. §1051(a)(3)(A) ,  (a)(3)(D) .

Concurrent Use. The verification for concurrent use should be modified to indicate that no other persons except authorized users and concurrent users as specified in the application have the right to use the mark in commerce. 37 C.F.R. §2.45(d) ; see 15 U.S.C. §1051(a)(3)(D) .  See TMEP §1207.04(d)(ii) for concurrent use application requirements for a certification mark.

Affirmative, Unequivocal Averments Based on Personal Knowledge Required . The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as “the undersigned [person signing the declaration] has been informed that the mark is in use in commerce [or has been informed that applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce] . . .,” or wording that disavows the substance of the declaration, are unacceptable.

Verification Not Filed Within Reasonable Time. If the verified statement is not filed within a reasonable time after it is signed, the examining attorney will require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce (in an application based on §1(a)); or, 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 (in an application based on §1(b) or §44). 37 C.F.R. §2.45(b)(1) . See TMEP §804.03 for information regarding time between execution and filing of documents.

Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20 .

1306.02(b)(ii) Statements Required in Verification of Application for Registration – §66(a) Application

The verified statement for a certification mark in a §66(a) application 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. §2.45(b)(2) .

In applications under §66(a) of the Act, the applicant must amend 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 on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §2.45(a)(4)(v)(B) . 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, that 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/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.  §1141(f)(a) .

Additionally, because the verified statement cannot be filed 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. §2.45(b)(2) .

See TMEP §1306.02(a)(v) for further information regarding filing-basis requirements, including the verified statement.

1306.04(b)(i) Exercise of Control

As stated in the application requirements, an application based on use in commerce under §1(a) of the Trademark Act, and an allegation of use under 15 U.S.C. §1051(c)   or 15 U.S.C. §1051(d)   filed in connection with a §1(b) application, must include a verified statement that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(i)(F) , 2.76(b)(1)(v) , 2.88(b)(1)(v) . For an application based on §1(b), §44, or §66(a) of the Act, the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the certification mark in commerce. 37 C.F.R. §§2.45(a)(4)(ii)(C) , (a)(4)(iii)(C) , (a)(4)(iv)(C) , (a)(4)(v)(B) .

If there is any evidence of record that casts doubt as to the existence or nature of such control by the applicant, the examining attorney must require an explanation and sufficient disclosure of facts, or the filing of appropriate documents, to support the applicant’s statement regarding the exercise of control over the use of the mark, pursuant to 37 C.F.R. §2.61(b) .

1306.04(b)(ii) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark

Sometimes, an application requests registration of a certification mark, but there is a contractual relationship in the nature of a franchise or license between the applicant and the user of the mark, whereby the applicant, as the franchisor or licensor, specifies the nature or quality of the goods produced (or of the services performed) under the contract. These situations require care in examination because they usually indicate trademark or service mark use (through related companies) rather than certification mark use, because the applicant, as franchisor or licensor, controls the nature of the goods or services and has the responsibility for their quality.

The key distinction between use of subject matter as a certification mark and use as a trademark or service mark through a related company is the purpose and function of the mark in the market place, and the significance that it would have to the relevant purchasing public. A trademark or service mark serves to indicate the origin of goods or services, whereas a certification mark serves to guarantee certain qualities or characteristics. See In re Monsanto Co. , 201 USPQ 864, 870 (TTAB 1978) ; In re Celanese Corp. of Am. , 136 USPQ 86 (TTAB 1962) .

Furthermore, the owner of a certification mark must permit use of the mark if the goods or services meet the certifier’s standard, whereas a trademark owner may, but is not obligated to, license use of its mark to third parties. In re Monsanto Co., 201 USPQ at 870.

1306.04(b)(iii) Patent Licenses

Sometimes, the owner of a patent asserts ownership of the mark that is applied to goods that are manufactured under license from the patent owner, in accordance with the terms and specifications of the patent. Typically, these marks have been registered as trademarks, on the basis of related-company use, rather than as certification marks. Generally, the patent owner’s purpose, in arranging for the application of a mark to the goods manufactured under his or her license, would be to identify and distinguish those goods whose nature and quality the patent owner controls through the terms and specifications of the patent. Therefore, registration as a trademark (on the basis of related-company use) rather than registration as a certification mark would be appropriate.

1306.04(d)(i) Whether Certification Mark and Trademark or Service Mark Appear on Specimen Together

It is customary for trademarks or service marks to be placed on goods or used with services in conjunction with certification marks. However, it is also possible for a certification mark to be the only mark used on goods or with services. Some producers market their goods or services without using a trademark or service mark, yet these producers may be authorized to use a certification mark and, as a result, the certification mark would be the only mark on the goods or services. In these situations, the significance of the mark might not be readily apparent and the examining attorney should request an explanation under 37 C.F.R. §2.61(b) of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See TMEP §1306.06 .

When a trademark or a service mark appears on the specimen in addition to a certification mark, the certification mark can be on a separate label, or can be included on a single label along with the user’s own trademark or service mark.

A composite certification mark may include a trademark or service mark, provided the composite mark functions to certify, with the trademark or service mark serving only to inform, or to suggest the certification program, rather than to indicate the commercial origin of the goods or services with which the mark is used. These situations usually are created when a company that produces goods or performs services wants to develop a program and a mark to certify characteristics of the goods or services of others that are related to the producer’s own goods or services. See the examples in TMEP §1306.04(b) .

Under these circumstances, the trademark or service mark must be owned by the same person who owns the certification mark, and the trademark or service mark may not be identical to the certification mark. See 37 C.F.R. §§2.45(f) , 2.86(d) .

Further, a party may not include the trademark or service mark of another in a certification mark, even with a disclaimer. If the examining attorney believes that a trademark or service mark included in a certification mark is not owned by the applicant, the examining attorney must refuse registration of the certification mark based on Section 2(d), 15 U.S.C. §1052(d) ,  or false association under Section 2(a), 15 U.S.C. §1052(a) ,  as appropriate.

1306.04(d)(ii) Specimen Shows Use as Title or Degree for Certification Mark Certifying that Labor Was Performed by Specific Group or Individual

A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127 .  The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. In re Nat’l Inst. for Auto. Serv. Excellence , 218 USPQ 744, 747 (TTAB 1983) ; see also Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y , 224 USPQ 798 (TTAB1984) . Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or otherwise, as a certification mark.

Occasionally, it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership, or whether the term is merely being used as a title or a degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or a degree may function as a certification mark if used in the proper manner. See In re Council on Certification of Nurse Anesthetists , 85 USPQ2d 1403 (TTAB2007) (CRNA functions as certification mark used to certify that anesthesia services are being performed by a person who meets certain standards and tests of competency); In re Software Publishers Ass’n , 69 USPQ2d 2009 (TTAB2003) (CERTIFIED SOFTWARE MANAGER used on certificate merely indicates that holder of the certificate has been awarded a title or degree, and is not likely to be perceived as certification mark); In re Nat’l Ass’n of Purchasing Mgmt. , 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not as certification mark); In re Nat’l Ass’n of Legal Secretaries (Int’l) , 221 USPQ 50 (TTAB 1983) (PROFESSIONAL LEGAL SECRETARY not used on the specimen in such a way as to indicate certification significance); In re Nat’l Inst. for Auto. Serv. Excellence, supra (design mark not used simply as a degree or title, but to certify that the performer of the services had met certain standards); In re Inst. of Certified Prof’l Bus. Consultants , 216 USPQ 338 (TTAB1982) (CPBC not used as a certification mark for business consulting services, but only as a title or degree); In re Prof’l Photographers of Ohio, Inc. , 149 USPQ 857 (TTAB1966) (CERTIFIED PROFESSIONAL PHOTOGRAPHER used only as the title of a person, not as a certification mark); cf. In re Univ. of Miss., 1 USPQ2d 1909 (TTAB 1987) (use of university seal on diplomas did not represent use as a certification mark).

See TMEP §1306.06(a) regarding the difference between a certification mark and a collective mark.

1306.04(f)(i) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa

The nature of the activity in which the mark is used or intended to be used may change from use to certify characteristics of goods or services to use on the party’s own goods or services, or on goods or services produced for the party by related companies. The change might also be the other way around, from trademark or service mark use to certification mark use.

If there is already a registration as one type of mark and the registrant files an application for registration of the mark as the other type, the applicant must surrender the previous registration under §7(e) of the Trademark Act, 15 U.S.C. §1057(e) ,  before the examining attorney approves the new application for publication for opposition or issuance of a registration on the Supplemental Register. See 37 C.F.R. §2.172 and TMEP §1608 regarding surrender. The registration certificate for the new application should not issue until the prior registration actually has been cancelled.

In examining the new application, the examining attorney must carefully review the application to ensure that the facts of record support the new application.

1306.05(b)(i) Certification Statement

Indicating the Region

When a geographic term is being used as a certification mark to indicate regional origin, the application must define the regional origin that the mark certifies. The identified region might be as large as a country or as small as a village, and an applicant may define it in general terms in the certification statement (e.g., “the Darjeeling region in India” or “the community of Roquefort, Department of Aveyron, France”). The certification standards, however, will usually be more specific as to the particular geographic boundaries involved.

If the available evidence indicates that the region identified by a geographic designation in the mark is well known for the identified goods or services, or that the goods or services are principal products of the region, the certification statement must limit the defined region to the region identified by the designation in the mark. When the certification statement is not appropriately limited in these instances, it is possible that the mark will be applied to goods or services that do not originate in the region named in the mark. Thus, the mark is geographically deceptive as to those goods or services and must be refused accordingly. See TMEP §1306.05(e) . The applicant may overcome the refusal by amending the certification statement to limit the defined region to the region identified by the geographic designation in the mark.

If there is insufficient evidence to conclude that the region identified in the mark is known for the goods or services, or that the goods or services are principal products of the region, the region defined in the certification statement may be broader than the region named in the mark. However, the region named in the mark must still be encompassed by the larger region specified in the certification statement.

Other Characteristics

The certification statement must be sufficiently detailed to give proper notice of what is being certified, which may include other characteristics in addition to geographic origin. See TMEP §1306.03(a) . For example, the registration for ROQUEFORT indicates the mark certifies that the cheese to which it is applied “has been manufactured from sheep’s milk only, and has been cured in the natural caves of the community of Roquefort, Department of Aveyron, France.”

Form of Certification Statement

The certification statement must start with the following wording or the equivalent: “The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods/services provided have . . . .” See TMEP §1306.03(a) . The following are examples of acceptable certification statements for geographic certification marks:

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier.

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the cheese on which the mark is used has been made entirely in the State of California with cow’s milk produced entirely within the State of California.

The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the agricultural products are aquacultural seafood products from the waters in the Gulf of Mexico off the Florida coast that are determined to be safe from oil.

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

1306.05(b)(ii) Authority to Control a Geographic Certification Mark

The right that a private person can acquire in a geographical term is usually a trademark right, on the basis of exclusive use resulting in the term becoming distinctive of that person’s goods. Sometimes, however, circumstances make it desirable or necessary for various persons in a region to use a geographic designation for that region not as a trademark indicating commercial origin in one particular source, but to certify the regional origin of all the parties’ goods. And, when geographic designations are used to certify regional origin, a governmental body or government-authorized entity is usually most able to exert the necessary control to ensure all qualified parties in the region are free to use the designation and to discourage improper or otherwise detrimental uses of the certification mark.

When a geographical term is used as a certification mark, two elements are of basic concern: first, preserving the freedom of all persons in the region to use the term and; second, preventing abuses or illegal uses of the mark that would be detrimental to all those entitled to use the mark. Normally, a private individual is not in the best position to fulfill these objectives. The government of a region would be the logical authority to control the use of the name of the region. The government, either directly or through a body to which it has given authority, would have power to preserve the right of all persons entitled to use the mark and to prevent abuse or illegal use of the mark.

The applicant may be the government itself (such as the government of the United States, a state, or a city), one of the departments of a government, or a body operating with governmental authorization that is not formally a part of the government. There may be an interrelationship between bodies in more than one of these categories and the decision as to which is the appropriate body to apply depends on which body actually conducts the certification program or is most directly associated with it. The examining attorney should not question the identity of the applicant, unless the record indicates that the entity identified as the applicant is not the certifier.

If an applicant’s authority to control use of a geographic certification mark featuring a geographic designation is not obvious, or is otherwise unclear, such as when the applicant is not a governmental entity, the examining attorney must request clarification, using a Trademark Rule 2.61(b) requirement for information. 37 C.F.R. §2.61(b) . One acceptable response would be an explanation that the relevant governmental body has granted the applicant the authority to implement the certification program. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1497-1501 (TTAB 2017) (finding that applicant, a nonprofit civil association accredited under Mexican law to certify tequila and authorized by the Mexican government to apply to register TEQUILA as a certification mark, had the authority to control use of the term).

If the applicant’s response does not establish applicant’s authority to control the mark, registration may be refused under Trademark Act Sections 4 and 45, 15 U.S.C. §§1054 ,  1127 , on the ground that the application does not satisfy all of the statutory requirements for a certification mark because the applicant does not appear to exercise legitimate control over the use of the mark or does not have a bona fide intent to do so.

1306.05(b)(iii) Specimens

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 §§1301.04-1301.04(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) . See TMEP §1306.02(a)(i)(B) for more information regarding specimens for certification marks.

Because geographic certification marks certify regional origin, and thus often consist primarily of a geographic term, they may appear in an inconspicuous fashion on specimens ( see TMEP §1306.05(j) , Examples 4 and 8) and they may not look the same as other types of certification marks, which typically include wording, such as “certified,” or design elements, such as seals or similar matter. In other instances, the geographic certification mark may be the only mark displayed because the authorized user has chosen to market its goods or services without using a trademark or service mark. See TMEP §1306.05(j) , Example 2. If the significance of the mark as used on the specimen is not apparent, the examining attorney may require the applicant, pursuant to 37 C.F.R. §2.61(b) , to explain the circumstances surrounding the use of the mark so that the examining attorney may determine whether the mark truly functions as a certification mark.

If the examining attorney concludes either that the specimen does not show the mark being used by a person other than the applicant or that the specimen does not demonstrate the mark functioning as a certification mark, registration should be refused under Trademark Act §§1, 2, 4, and 45, 15 U.S.C. §§1051 ,  1052 , 1054 , 1127 . The applicant may overcome the refusal by submitting an acceptable substitute specimen or amending the filing basis to §1(b), if appropriate. See TMEP §§806.03(c) , 904.05 .

1306.05(g)(i) Considerations When the Proposed Mark Is a Geographic Certification Mark

When the application is for a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for geographic certification mark, but also any prior mark of any type that contains a geographic designation (whether disclaimed or not) that is confusingly similar to the designation in the applied-for mark.

Thus, if the geographic certification mark certifies that figs originate in Wyoming, and consists of a stylized cowboy hat above the wording WYOMING CERTIFIED (with CERTIFIED disclaimed), the potential cites may include (i) a geographic certification mark that is applied to Wyoming figs and is composed of the wording WYOMING’S OWN and (ii) a trademark that is applied to figs and consists of a cowboy-hat design that is nearly identical to the design in the applied-for mark.

Or, if the geographic certification mark certifies that pecans originate in Shenandoah County, Virginia, and consists of the wording SHENANDOAH COUNTY, potential cites may include (i) a trademark for roasted mixed nuts, consisting of the wording T.MARKEY’S SHENANDOAH MIXED NUTS (with SHENANDOAH MIXED NUTS disclaimed) and (ii) a trademark for pecans, composed of a stylized depiction of a pecan and the wording PETE’S PRICELESS PECANS OF SHENANDOAH (with PECANS OF SHENANDOAH disclaimed).

If there are numerous registrations and prior applications containing the same geographic designation (whether disclaimed or not) as the geographic certification mark, then, in the absence of the consent of the relevant registrants and applicants, a §2(d) refusal citing all of the relevant registrations and an advisory citing the prior applications may be appropriate. In addition, the examining attorney should consider refusing registration under Trademark Act §§4 and 45, 15 U.S.C. §§1054 ,  1127 , on the basis that the application does not satisfy all of the statutory requirements for a certification mark because the applicant does not appear to exercise legitimate control over the use of the applied-for mark. See 15 U.S.C. §1054 ;  37 C.F.R. §2.45 ; TMEP §1306.04(b)(i) . The applicant may respond to these refusals by submitting information or evidence that supports registration, including information and evidence regarding the relationship between the applicant and the owners of the cited marks.

1306.05(g)(ii) Considerations When the Proposed Mark Contains a Geographic Designation but Is Not a Geographic Certification Mark

When the application is for a mark that contains a geographic designation but is not a geographic certification mark, the examining attorney should consider citing not only any prior mark with distinctive elements (e.g., suggestive, arbitrary, or fanciful wording, or distinctive design elements) that are confusingly similar to those in the applied-for mark, but also any prior geographic certification mark containing a geographic designation that is confusingly similar to the geographic designation in the applied-for mark. Even if the geographic designation in the applied-for mark is not the dominant element, is relatively inconspicuous, or appears with a number of other elements, it may nonetheless be appropriate to cite a prior geographic certification mark that contains the same designation. By contrast, if there are no prior geographic certification marks containing the geographic designation, but there are numerous prior trademarks or service marks that contain and disclaim the designation, then a §2(d) refusal based on the fact that the respective marks share the designation is likely not appropriate.

As an example of the analysis when a prior geographic certification mark is involved, consider an applied-for mark that is used as a trademark for fresh bamboo shoots, consisting of the wording ZZZ BAMBOO in large lettering appearing above EVERGLADES in small lettering (with BAMBOO and EVERGLADES disclaimed). A potential cite might be a geographic certification mark consisting of the wording CERTIFIED EVERGLADES BAMBOO (with CERTIFIED and BAMBOO disclaimed), which certifies that live bamboo plants originate in the Everglades. Citing the prior geographic certification mark, and only that mark, may be appropriate even if there are also a few prior trademarks that contain the word EVERGLADES and are applied to bamboo products.

Of course, if other matter in the applied-for mark changes the commercial impression of a geographic designation (e.g., GEORGE WASHINGTON FRUITS vs. WASHINGTON STATE RAISINS), then that factor would weigh against citing prior marks containing the geographic term. See TMEP §1207.01(b)(iii) .

Confusion as to sponsorship, affiliation, or connection may be likely even when the applicant’s goods or services have been certified by the owner of the certification mark or would otherwise be considered genuine. See Institute Nat’l Des Appellations d’Origine v. Brown-Forman Corp ., 47 USPQ2d 1875, 1890-91 (TTAB 1998) . Thus, the mere fact that the applied-for mark is, or will be, applied to goods or services that originate in the relevant geographic region covered by a confusingly similar registered certification mark, and otherwise meet the certification standards of the registrant, is not, by itself, sufficient to overcome a §2(d) refusal. See id. at 1889-91.