TMEP § 819.02(c)
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.