TMEP § 819.02
The applicant must pay an insufficient information fee, per class, if any of the following base application requirements are not met:
If an applicant omits certain required information in the initial application, the trademark electronic filing system will require the insufficient information fee. The electronic form will indicate the elements that will incur an insufficient information fee if omitted.
If the insufficient information fee is not required at the time of filing and the examining attorney determines that the applicant did not provide required information, or provided irrelevant or clearly inappropriate information (e.g., the notation "???" is entered), the required information will be considered omitted and the examining attorney must issue an Office action requiring the insufficient information fee.
The insufficient information fee does not apply to deficiencies arising from identification-related requirements, including requirements that arise from an identification falling within more than one class. In general, identification-related deficiencies in an application will incur the free-form text ID fee under 37 C.F.R. §2.22(a)(20). See TMEP §819.03 for the identification-related deficiencies that incur the free-form text ID fee and §819.05(c) for further discussion of different fees applying to the same application.
Per class. The insufficient information fee applies to all active classes in the application at the time the fee is required, even if classes are subsequently deleted, and will also apply to any new classes that are subsequently added to the application.
Example: The service mark application is for two classes. The applicant uses the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) within the electronic form for each service listed, and the insufficient information fee is not required at filing. The examining attorney determines the application does not meet the base application requirements because a translation of the non-English wording in the mark was not provided. The Office action includes: (1) a requirement for a translation statement; (2) a requirement for the insufficient information fee for two classes; and (3) a refusal of registration as to one class under Trademark Act §2(d). If the applicant responds by submitting a translation and deleting the class that was refused under §2(d), the applicant must still pay the insufficient information fee for two classes, because there were two classes in the application when the Office action requiring the insufficient information fee was issued.
No partial refusal. Because the insufficient information fee applies to all classes in the application at the time the fee is required, an Office action requiring this additional fee can never be a partial refusal.
The application must include the applicant’s name and domicile address. 37 C.F.R. §2.22(a)(1); In re Chestek PLLC, 92 F.4th 1105, 1113 (Fed. Cir. 2024) (domicile address requirement affirmed). See TMEP §601.01 and §803.05(a) for information on what constitutes an applicant’s domicile address. The insufficient information fee is required if this information is omitted. 37 C.F.R. §2.22(b).
If the application includes this information, no insufficient information fee will be required if the application is amended to clarify the information or to correct an inadvertent error. For example, if applicant’s domicile address is incorrectly identified as a post-office box or "care of" address, the insufficient information fee will not be required to amend the application to clarify or correct the domicile address.
The application must include the applicant’s legal entity. 37 C.F.R. §2.22(a)(2); see TMEP §803.03. The application must also set forth the citizenship of an individual applicant, or the state or country of incorporation or organization of each juristic applicant. 37 C.F.R. §2.22(a)(3); see TMEP §803.04. The insufficient information fee is required if this information is omitted. 37 C.F.R. §2.22(b).
If the application includes this information, no insufficient information fee will be required if the application is amended to clarify the information or correct an inadvertent error.
Trademark Rule 2.22(a)(4) requires that where the applicant is a domestic partnership, the application must include the names and citizenship of the applicant’s general partners. TMEP §803.03(b). In addition, the rule requires for a domestic joint venture the application include the names and citizenship of the applicant’s active members. Id. Similarly, Rule 2.22(a)(5) requires for a sole proprietorship the application include the name and citizenship of the applicant’s sole proprietor. TMEP §803.03(a).
The application must include at least one basis for filing under Trademark Act §1 and/or §44 that meets the requirements of 37 C.F.R. §§2.34 (for trademarks and service marks), 2.44 (for collective trademarks, collective service marks, and collective membership marks), or 2.45 (for certification marks), as applicable. If more than one basis is set forth, the applicant must comply with the requirements of 37 C.F.R. §§2.34, 2.44, or 2.45, as applicable, for each asserted basis. 37 C.F.R. §2.22(a)(6). If this base application requirement is not met, the applicant will be required to pay an insufficient information fee. 37 C.F.R. §2.22(b).
In a multiple-basis application, if the applicant fails to comply with the requirements of 37 C.F.R. §§2.34, 2.44, or 2.45, as applicable, for one of the bases claimed in the initial application, the applicant cannot avoid paying the insufficient information fee by deleting the relevant basis.
The requirements for establishing a §1(a) basis are set forth in 37 C.F.R. §2.34(a)(1) for trademark and service mark applications (see TMEP §806.01(a)), §2.44(a)(4)(i) for collective trademarks, collective service marks, and collective membership marks (see TMEP §1303.01(a)(i) for collective trademarks and collective service marks and §1304.02(a)(i) for collective membership marks), and §2.45(a)(4)(i) for certification marks (see TMEP §1306.02(a)(i)).
The requirements for establishing a §1(a) basis for trademarks and service marks are set forth in 37 C.F.R. §2.34(a)(1). See also TMEP §806.01(a). The insufficient information fee is required if the following requirements are not met. 37 C.F.R. §2.22(b).
Specimen(s). The application must include one specimen showing how the applicant uses the mark in commerce for each class of goods/services. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(iv). As long as the specimen depicts the mark, no insufficient information fee will be required if registration is refused because the specimen is unacceptable.
An applicant has not met the base application requirement under 37 C.F.R. §2.22(a)(6) if the mark on the specimen is materially different from the mark on the drawing. If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered. In such instance, if the insufficient information fee was not required at the time of filing, then the examining attorney must require the insufficient information fee during examination. However, no insufficient information fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material.
Example: The mark on the drawing is ZZZ, and the mark on the specimen is ZEBRAMAX. Amending the drawing to match the specimen would materially alter the mark on the drawing, so the applicant, in effect, has failed to submit a specimen showing use of the mark on the drawing. As a result, the application does not meet the base application requirements and the insufficient information fee is required.
Example: The mark on the drawing is ZEBRAMAXX, and the mark on the specimen is ZEBRAMAX. The mark on the drawing is not a substantially exact representation of the mark on the specimen, but the difference between the marks is not material, so the applicant may amend the drawing, or submit a substitute specimen showing use of the mark on the drawing, without being required to pay the insufficient information fee.
Dates of Use. The application must include a date of first use of the mark anywhere and a date of first use of the mark in commerce for each class of goods and/or services. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(ii)-(iii). If the application includes this information and the dates are later amended, the applicant will not be required to pay the insufficient information fee.
Verified Statement of Use in Commerce. The application must include a verified statement that the mark is in use in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(i). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §1(a) basis for collective trademarks, collective service marks, and collective membership marks are set forth in 37 C.F.R. §2.44(a)(4)(i). See also TMEP §1303.01(a)(i) for the requirements for establishing a §1(a) basis for collective trademarks and collective service marks, and §1304.02(a)(i) for the requirements for establishing a §1(a) basis for collective membership marks. The insufficient information fee is required if the following requirements are not met. 37 C.F.R. §2.22(b).
Statement Specifying Method of Control. An applicant must specify the class of persons entitled to use the mark (i.e., the applicant’s members), indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a)(4)(i)(A). If the application includes a statement specifying the method of control, no insufficient information fee will be required if the application is later amended to further clarify the statement.
Specimen(s). The application must include one specimen showing how a member uses the mark in commerce. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(i)(C). For collective trademarks and collective service marks, one specimen must be submitted for each class of goods and/or services. As long as the specimen depicts the mark, no insufficient information fee will be required if registration is refused because the specimen is unacceptable. An applicant has not met the base application requirement under 37 C.F.R. §2.22(a)(6) if the mark on the specimen is materially different from the mark on the drawing. If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered. In such instance, if the insufficient information fee was not already required at the time of filing, then the examining attorney must require the insufficient information fee during examination. However, no insufficient information fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material. See TMEP §819.02(c)(i)(A) for an example of when the mark on the specimen is a material alteration of the mark in the drawing.
Dates of Use. For collective trademarks and collective service marks, the application must include the date of applicant’s member’s first use of the mark anywhere and the date of applicant’s member’s first use of the mark in commerce for each class of goods and/or services. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(i)(B). For collective membership marks, the application must include the date of first use of the mark anywhere to indicate membership in the collective organization and the date of the applicant’s member’s first use of the mark in commerce. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(i)(B).
If the application includes this information and the dates are later amended, the applicant will not be required to pay the insufficient information fee.
Verified Statement of Use in Commerce. For collective trademarks and collective service marks, the application must include a verified statement that 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. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(i)(D).
For collective membership marks, the applicant must include 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. See 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(i)(D).
See TMEP §819.02(f) regarding verification.
The requirements for establishing a §1(a) basis for certification marks are set forth in 37 C.F.R. §2.45(a)(4)(i). See also TMEP §1306.02(a)(i). The insufficient information fee is required if the following requirements are not met. 37 C.F.R. §2.22(b).
Statement Specifying What Applicant is Certifying. An applicant must submit a statement specifying what the applicant is certifying about the goods and/or services in the application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(i)(A). If the application includes a certification statement, no insufficient information fee is required if the certification statement is later amended to provide greater specificity.
Certification Standards. An applicant must submit a copy of the certification standards governing use of the certification mark on or in connection with the goods and/or services specified in the application.37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(i)(B).
Statement that Applicant is Not Engaged in Production or Marketing of the Goods and/or Services. An applicant must submit a statement that the applicant is not engaged in the production or marketing of the goods and/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. §§2.22(a)(6), 2.45(a)(4)(i)(C).
Specimen(s). The application must include 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. §§2.22(a)(6), 2.45(a)(4)(i)(E).
As long as the specimen depicts the mark, no insufficient information fee is required if registration is refused because the specimen is unacceptable. An applicant has not met the base application requirement under 37 C.F.R. §2.22(a)(6) if the mark on the specimen is materially different from the mark on the drawing. If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered. In such instance, if the insufficient information fee was not already required at the time of filing, then the examining attorney must require the insufficient information fee during examination. However, no insufficient information fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material. See TMEP §819.02(c)(i)(A) for an example of when the mark on the specimen is a material alteration of the mark in the drawing.
Dates of Use. The application must include the date of applicant’s authorized user’s first use of the mark anywhere and the date of applicant’s authorized user’s first use of the mark in commerce on or in connection with the goods and/or services. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(i)(D). If the application includes this information and the dates are later amended, the applicant will not be required to pay the insufficient information fee.
Verified Statement of Use in Commerce. The application must include 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. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(i)(F). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §1(b) basis are set forth in 37 C.F.R. §2.34(a)(2) for trademark and service mark applications (see TMEP §806.01(b)), §2.44(a)(4)(ii) for collective trademarks, collective service marks, and collective membership marks (see TMEP §1303.01(a)(ii) for collective trademarks and collective service marks and §1304.02(a)(ii) for collective membership marks), and §2.45(a)(4)(ii) for certification marks (see TMEP §1306.02(a)(ii)).
A §1(b) application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §§2.22(a)(6), 2.34(a)(2). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §1(b) basis for collective trademarks, collective service marks, and collective membership marks are set forth in 37 C.F.R. §2.44(a)(4)(ii). For collective trademarks and collective service marks, 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. §§2.22(a)(6), 2.44(a)(4)(ii). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b).
For collective membership marks, 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 collective membership organization 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. §§2.22(a)(6), 2.44(a)(4)(ii). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b).
See TMEP §819.02(f) regarding verification.
The requirements for establishing a §1(b) basis for certification marks are set forth in 37 C.F.R. §2.45(a)(4)(ii). See also TMEP §1306.02(a)(ii). An insufficient information fee is required if the following statements are omitted. 37 C.F.R. §2.22(b).
Statement Specifying What Applicant Will be Certifying. An applicant must submit a statement specifying what the applicant will be certifying about the goods and/or services in the application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(ii)(A). If the application includes a certification statement, no insufficient information fee will be required if the certification statement is later amended to provide greater specificity.
Statement that Applicant Will Not Engage in Production or Marketing of the Goods and/or Services. An applicant must submit a statement that the applicant will not engage in the production or marketing of the goods and/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. §§2.22(a)(6), 2.45(a)(4)(ii)(B).
Verified Statement. The application must include 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. §§2.22(a)(6), 2.45(a)(4)(ii)(C). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3) for trademark and service mark applications (see TMEP §806.01(d)), §2.44(a)(4)(iii) for collective trademarks, collective service marks, and collective membership marks (see TMEP §1303.01(a)(iv) for collective trademarks and collective service marks and §1304.02(a)(iv) for collective membership marks), and §2.45(a)(4)(iii) for certification marks (see TMEP §1306.02(a)(iv)).
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3). See also TMEP §806.01(d).
The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.34(a)(3)(ii). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.34(a)(3)(iii).
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §2.34(a)(3)(i). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.44(a)(4)(iii). See also TMEP §1303.01(a)(iv) for the requirements for establishing a basis under §44(e) for collective trademarks and collective service marks and §1304.02(a)(iv) for the requirements for establishing a basis under §44(e) for collective membership marks.
The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.44(a)(4)(iii)(A). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.44(a)(4)(iii)(A).
Bona Fide Intention to Use the Mark in Commerce. For collective trademarks and collective service marks, 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. §§2.22(a)(6), 2.44(a)(4)(iii)(B). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b).
For collective membership marks, 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 collective membership organization 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. §§2.22(a)(6), 2.44(a)(4)(iii)(B). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b).
See TMEP §819.02(f) regarding verification.
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.45(a)(4)(iii). See also TMEP §1306.02(a)(iv).
Statement Specifying What Applicant Will be Certifying. An applicant must submit a statement specifying what the applicant will be certifying about the goods and/or services in the application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iii)(B). An insufficient information fee is required if this statement is omitted. 37 C.F.R. §2.22(b). If the application includes a certification statement, no insufficient information fee will be required if the certification statement is later amended to provide greater specificity.
Statement that Applicant Will Not Engage in Production or Marketing of the Goods and/or Services. An applicant must submit a statement that the applicant will not engage in the production or marketing of the goods and/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. §§2.22(a)(6), 2.45(a)(4)(iii)(B). An insufficient information fee is required if this statement is omitted. 37 C.F.R. §2.22(b).
Copy of Foreign Registration Certificate. The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.45(a)(4)(iii)(A). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.45(a)(4)(iii)(A).
Bona Fide Intention to Use the Mark in Commerce. The application must include 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. §§2.22(a)(6), 2.45(a)(4)(iii)(C). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4) for trademarks and service marks (see TMEP §806.01(c)), §2.44(a)(4)(iv) for collective trademarks, collective service marks, and collective membership marks (see TMEP §1303.01(a)(iii) for collective trademarks and collective service marks and §1304.02(a)(iii) for collective membership marks), and §2.45(a)(4)(iv) for certification marks (see TMEP §1306.02(a)(iii)).
The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4) for trademarks and service marks. See TMEP §806.01(c).
Claim of Priority Filed Within Six Months of Foreign Filing. The claim of priority must be filed within six months of the filing date of the foreign application. 37 C.F.R. §§2.22(a)(6), 2.34(a)(4)(i). An insufficient information fee is required if the application does not meet this requirement. 37 C.F.R. §2.22(b).
First Filed Application. The applicant must: (a) specify the filing date 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. §§2.22(a)(6), 2.34(a)(4)(i). The insufficient information fee is required if applicant does not meet this requirement. 37 C.F.R. §2.22(b).
Serial Number of Foreign Application Omitted - No Fee Required. The insufficient information fee is not required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States. However, the serial number must be provided before the application can be approved for publication. 37 C.F.R. §2.34(a)(4)(i)(A).
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §§2.22(a)(6), 2.34(a)(4)(ii). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.44(a)(4)(iv) for collective trademarks, collective service marks, and collective membership marks. See TMEP §1303.01(a)(iii) for collective trademarks and collective service marks and §1304.02(a)(iii) for collective membership marks.
Claim of Priority Filed Within Six Months of Foreign Filing. The claim of priority must be filed within six months of the filing date of the foreign application. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(iv)(A). An insufficient information fee is required if the application does not meet this requirement. 37 C.F.R. §2.22(b).
First Filed Application. The applicant must: (a) specify the filing date 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. §§2.22(a)(6), 2.44(a)(4)(iv)(A). The insufficient information fee is required if applicant does not meet this requirement. 37 C.F.R. §2.22(b).
Serial Number of Foreign Application Omitted - No Fee Required. The insufficient information fee is not required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States. However, the serial number must be provided before the application can be approved for publication. 37 C.F.R. §2.44(a)(4)(iv)(A).
Bona Fide Intention to Use the Mark in Commerce. For collective trademarks and collective service marks, 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. §§2.22(a)(6), 2.44(a)(4)(iv)(B). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b).
For collective membership marks, 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 collective membership organization 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. §§2.22(a)(6), 2.44(a)(4)(iv)(B). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b).
See TMEP §819.02(f) regarding verification.
The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.45(a)(4)(iv) for certification marks. See TMEP §1306.02(a)(iii).
Statement Specifying What Applicant Will be Certifying. An applicant must submit a statement specifying what the applicant will be certifying about the goods and/or services in the application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iv)(B). An insufficient information fee is required if this statement is omitted. 37 C.F.R. §2.22(b). If the application includes a certification statement, no insufficient information fee will be required if the certification statement is later amended to provide greater specificity.
Statement that Applicant Will Not Engage in Production or Marketing of the Goods and/or Services. An applicant must submit a statement that the applicant will not engage in the production or marketing of the goods and/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. §§2.22(a)(6), 2.45(a)(4)(iv)(B). The insufficient information fee is required if this statement is omitted. See 37 C.F.R. §2.22(b).
Claim of Priority Filed Within Six Months of Foreign Filing. The claim of priority must be filed within six months of the filing date of the foreign application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iv)(A). The insufficient information fee is required if this requirement is not met. 37 C.F.R. §2.22(b).
First Filed Application. The applicant must: (a) specify the filing date 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. §§2.22(a)(6), 2.45(a)(4)(iv)(A). The insufficient information fee is required if this requirement is not met. 37 C.F.R. §2.22(b).
Serial Number of Foreign Application Omitted - No Fee Required. The insufficient information fee is not required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States. However, the serial number must be provided before the application can be approved for publication. 37 C.F.R. §2.45(a)(4)(iv)(A).
Bona Fide Intention to Use the Mark in Commerce. The application must include 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. §§2.22(a)(6), 2.45(a)(4)(iv)(C). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86. 37 C.F.R. §2.22(a)(7).
Trademarks and Service Marks. The application must include:
Collective Trademarks, Collective Service Marks, and Collective Membership Marks. The application must include:
Certification Marks. The application must include:
For more information regarding multiple-class applications, see TMEP §§1403-1403.05.
Identification Includes More than One Class, and Filing Fees Not Sufficient – Insufficient Information Fee Does Not Apply. The insufficient information fee does not apply to deficiencies arising from identification-related requirements, including requirements that arise from an identification falling within more than one class. In general, identification-related deficiencies in an application will incur the free-form text ID fee under 37 C.F.R. §2.22(a)(20). See TMEP §819.03 for the identification-related deficiencies that incur the free-form text ID fee and §819.05(c) for further discussion of different fees applying to the same application.
The application must include a filing fee for each class of goods/services, as required by 37 C.F.R. §2.6(a)(1)(iii). 37 C.F.R. §2.22(a)(8). The trademark electronic filing system will require all known filing fees at the time of filing, and such fees must be paid in order to submit the application.
The insufficient information fee will not be required if the examining attorney determines that the identification includes goods and/or services in more than one class and the fees paid at the time of filing were not sufficient to cover all classes. The insufficient information fee does not apply to deficiencies arising from identification-related requirements, including requirements that arise from an identification falling within more than one class. In general, identification-related deficiencies in an application will incur the free-form text ID fee under 37 C.F.R. §2.22(a)(20). See TMEP §819.03 for the identification-related deficiencies that incur the free-form text ID fee and §819.05(c) for further discussion of different fees applying to the same application.
For trademark and service mark applications, the application must include a verified statement that meets the requirements of 37 C.F.R. §2.33, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to 37 C.F.R. §2.193(e)(1). 37 C.F.R. §2.22(a)(9).
For collective trademark, collective service marks, and collective membership mark applications, the application must include a verified statement that meets the requirements of 37 C.F.R. §2.44, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to 37 C.F.R. §2.193(e)(1). See id.
For certification mark applications, the application must include a verified statement that meets the requirements of 37 C.F.R. §2.45, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to 37 C.F.R. §2.193(e)(1). See id.
If the application includes a signed verification, the insufficient information fee will not be required if a substitute verification is later submitted. See 37 C.F.R. §2.22(b). To provide a signature, the applicant has the option of: (1) the signatory personally entering any combination of letters, numbers, spaces, and/or punctuation marks that the signatory has adopted as a signature, placed between two forward slash ("/") symbols in the electronic application form (37 C.F.R. §2.193(c)(1) ); (2) the signatory signing the verified statement in the traditional pen-and-ink manner, and attachment of an image file of the signed document to the electronic application form; (3) the signatory signing the verified statement as set forth in the USPTO’s pdf signature page with an electronic signature generated used document signing software that meets the requirements of TMEP §611.01(c)(ii), and attachment of an image file of the signed document to the electronic application form; or (4) completing the application online and emailing it to the signatory for electronic signature and automatic return via the trademark electronic filing system to the party who requested the signature. See TMEP §611.01(c).
If the applicant elects to attach a verified statement, the insufficient information fee will be required if the attachment:
The application must include a clear drawing of the mark comprising either: (1) a claim of standard characters and the mark is comprised only of characters in the USPTO's standard character set, typed in the appropriate field of the electronic application form; or (2) a digitized image of a mark in special form. 37 C.F.R. §2.22(a)(10)-(11). The trademark electronic filing system will generate a digitized image of the standard character mark and attach it to the electronic application.
A "clear drawing of the mark" is the same standard used in 37 C.F.R. §2.21(a)(3), which sets forth the requirements for receipt of an application filing date. Thus, if the application does not include a clear drawing of the mark, the application will be denied a filing date, in accordance with standard procedures for processing informal applications (see TMEP §§202–202.03, 204–204.03). If the application meets the requirement for a clear drawing of the mark, the applicant will not be required to pay the insufficient information fee if the examining attorney requires amendment of the drawing because it does not meet all the requirements of 37 C.F.R. §§2.51–2.53. See 37 C.F.R. §2.22(b).
Marks That Include Color. If the mark includes color, the drawing must show the mark in color, or the application will not meet the base application requirements. 37 C.F.R. §2.22(a)(10). The application must also include a color claim and a statement in the "Description of the Mark" field naming the color(s) and describing where they appear on the mark. 37 C.F.R. §§2.22(a)(12), 2.52(b)(1); see TMEP §819.02(h).
See TMEP §§807.03–807.03(i) for further information about standard character drawings, and §807.05(c) for the requirements for digitized images.
As noted above, if the mark includes color, the drawing must show the mark in color. 37 C.F.R. §2.22(a)(10). In addition, the application must include: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear on the mark. 37 C.F.R. §§2.22(a)(12), 2.52(b)(1). The electronic application form includes a checkbox in the "Color(s) Claimed" field to indicate whether the mark is in color. When the applicant checks this box, the applicant must name the colors claimed in the text field below the checkbox in the same "Color(s) Claimed" field. The applicant must then enter the color location statement in a separate "Description of the Mark" field.
As long as the initial application has a color drawing and applicant makes a reasonable attempt to identify the colors claimed in either the "Color(s) Claimed" field or the "Description of the Mark" field, the insufficient information fee will not be required if the application is amended to clarify the information or to correct an inadvertent error. For example, if the list of colors claimed is incomplete, or if the mark description does not identify the location of the colors claimed, the applicant will not be required to pay the insufficient information fee. See 37 C.F.R. §2.22(b). However, the insufficient information fee is required if the applicant fails to identify any colors. See id.
See TMEP §§807.07(a)-(a)(ii) for further information about color claims.
If the mark is not in standard characters, the application must include a description of the mark. 37 C.F.R. §§2.22(a)(13), 2.37. The applicant must enter the description in the "Description of the Mark" field of the electronic application.
If the applicant makes a good-faith effort to describe the mark, the insufficient information fee will not be required if the description is later amended. See 37 C.F.R. §2.22(b). However, the insufficient information fee will be required if the applicant enters completely inappropriate information in the "Description of the Mark" field. See id.
If the mark includes color, the "Description of the Mark" field must include a statement naming the color(s) and describing where the color(s) appear on the mark. See TMEP §819.02(h) regarding color claims.
See TMEP §§808–808.03(g) for further information about descriptions of the mark.
If the mark includes non-English wording, the application must include an English translation of that wording. 37 C.F.R. §2.22(a)(14). If the mark includes non-Latin characters, the application must include a transliteration of those characters. 37 C.F.R. §2.22(a)(15).
The insufficient information fee will be required if a translation and/or transliteration is omitted. 37 C.F.R. §2.22(b). If the initial application includes a translation and/or transliteration, no additional fee will be required if the translation/transliteration is later amended. However, the additional fee will be required if the translation or transliteration comprises inappropriate material, such as the notation "???." See id.
If the mark includes a name or portrait that could reasonably be perceived as the name or portrait of a particular living individual (see TMEP §§813–813.01(c), 1206–1206.05), the application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. 37 C.F.R. §2.22(a)(16).
The insufficient information fee is required if the mark includes an individual’s name or portrait, and these statements are omitted. 37 C.F.R. §2.22(b).
Exception: If the applicant fails to include a consent to use a name or portrait that appears in the mark, but the individual’s consent can be presumed because the individual named or shown in the mark personally signed the application (see TMEP §1206.04(b)), the applicant will not be required to pay the insufficient information fee.
If consent is of record in a valid registration owned by applicant, the applicant may satisfy the requirement for a consent statement by claiming ownership of the existing registration. See TMEP §1206.04(c).
If the initial application includes a statement regarding the name or likeness of an individual, no insufficient information fee will be required if the statement is later amended. See 37 C.F.R. §2.22(b).
The insufficient information fee is required only where it is clear that the name or likeness could reasonably be perceived as that of a living individual. The fee is required if the mark comprises a portrait, or of a first and last name. If the mark comprises a title, such as Mrs. Smith, a surname, or a first name only, the examining attorney must consider whether the name is that of a particular living individual (see TMEP §1206.03), but must not require the insufficient information fee.
Example: The mark is STEVEN JONES, and the application is silent as to whether this name identifies a living individual. The examining attorney must: (1) inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted; and (2) require the insufficient information fee if the insufficient information fee was not already paid at filing.
Example: The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual. If there is evidence that the name identifies an individual who is generally known or well known in the field relating to the relevant goods or services (see TMEP §§1206.02, 1206.03), the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but must not require the insufficient information fee. If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the insufficient information fee.
Example: The mark is STEVEN, and the application is silent as to whether this name identifies a living individual. If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the insufficient information fee. If there is evidence that the first name identifies an individual who is generally known or well known in the relevant field, the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but must not require the insufficient information fee.
See TMEP §1206.03 for further information as to when the examining attorney must issue an inquiry as to whether a name or likeness is that of a particular living individual, and §1206.02 regarding the connection between the individual and the relevant goods or services.
If the applicant owns one or more registrations for the same (i.e., identical) mark as of the application filing date, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, the application must include a claim of ownership of the prior registration(s), identified by the U.S. registration number(s). 37 C.F.R. §§2.22(a)(17), 2.36; see TMEP §812.
An insufficient information fee is required if a claim of ownership of registration(s) for the same mark, for which the last listed owner(s) of the prior registration(s) differs from the owner of the application, is omitted and the failure to claim the prior registration(s) would result in the issuance of a refusal under §2(d), 15 U.S.C. §1052(d). 37 C.F.R. §2.22(b). If the initial application includes an ownership claim for the same mark, the applicant will not be required to pay the insufficient information fee if the claim is later amended.
No insufficient information fee is required if a list of claimed registrations for the same mark is incomplete (e.g., applicant owns three registrations for the same mark and only claims two of them), but the examining attorney may require a claim of ownership of additional registrations for the same mark during examination.
No insufficient information fee is required if an applicant fails to claim ownership of a registration(s) for a similar mark (e.g., mark in application is ABC and applicant fails to claim ownership of a registration for ABC WEB BUILDERS). However, the examining attorney will require a claim of ownership of similar marks during examination, where appropriate.
If the applicant seeks concurrent use registration, the application must comply with the requirements of 37 C.F.R. §2.42. 37 C.F.R. §2.22(a)(18). That is, the applicant must, to the extent of the applicant’s knowledge, set forth the information required in TMEP §1207.04(d)(i).
If the elements for a concurrent use application are omitted, the insufficient information fee is required. See 37 C.F.R. §2.22(b). If the initial application includes a concurrent use claim with the proper elements, the applicant will not be required to pay the insufficient information fee if an element is later amended.
See TMEP §1207.04(d)(i) for more information about the requirements for a trademark or service mark concurrent use application.
If the applicant’s domicile is located outside the United States or its territories, the applicant must be represented before the USPTO by a qualified U.S. attorney. 37 C.F.R. §2.22(a)(19). See TMEP §601.01 and §803.05(a) for determining whether an applicant is domiciled outside the United States or its territories.
If the application includes the attorney’s name, postal address, email address, and bar information, the insufficient information fee will not be required if the application is amended to clarify the information or to correct an inadvertent error. However, if the application includes clearly invalid attorney identification information, or the listed attorney does not appear to be qualified to practice before the USPTO or to have consented to represent the applicant, the insufficient information fee is required. See 37 C.F.R. §2.22(b). The insufficient information fee is also required if the attorney bar information, appears valid on its face but is later determined to be invalid. See id. See TMEP §811.01 for additional information regarding the requirements for applicant’s attorney’s identification information. See TMEP §602.01(a) and §811.01 for submissions that include clearly invalid attorney identification information or the bar information appears valid on its face but is later determined to be invalid.