1904.01(c)   Declaration of Intent to Use Required

Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress.  The declaration must include a statement that the person making the declaration believes the applicant to be entitled to use the mark in commerce; and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.  15 U.S.C. §1141(5).

The declaration must be signed by:  (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.  37 C.F.R. §§2.33(a) and 2.193(e)(1).

The USPTO has provided the IB with wording for the declaration of the applicant’s bona fide intention to use the mark in commerce, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18).  Instructions as to who is a proper party to sign the declaration have also been provided to the IB.

The IB will check to ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO.  The IB does not send the verified statement to the USPTO.

The verified statement remains part of the international registration on file at the IB.  37 C.F.R. §2.33(e).  The examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of the application on file with the IB.  However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.  See TMEP §804.05 for further information about declarations in §66(a) applications.