Certification mark applications

A certification mark is a type of trademark that shows consumers that particular goods and services, or their providers, have met certain standards. Select from the links below to learn more.

What is a certification mark?

Examples of three types of certification marks
Does a certification mark have to include certain wording?
How does a certification mark differ from a trademark?
How does a certification mark differ from a collective mark?

Who can apply to register a certification mark? 
Can a certifying organization register the same mark as a certification mark and a trademark (or any other type of mark)?
What are the requirements to apply for a certification mark?
What is a “filing basis” and why is it required in a certification mark application?

What are the requirements for each filing basis?

Use-in-commerce filing basis
Intent-to-use filing basis
Foreign registration filing basis (rarely used for a certification mark)
Foreign application filing basis (rarely used for a certification mark)

Can I have more than one filing basis in my application?
What is the difference between a filing basis and a registration basis?
What if I accidentally filed an application for the wrong type of mark?
Can a registered certification mark prevent registration of similar trademarks due to a likelihood of confusion?
Need to respond to an office action about your certification mark?

What is a certification mark?

It’s a type of trademark used by authorized users to show consumers that particular goods or services, or the providers of those goods or services, have met certain standards set by a certifying organization. 

Certification marks are used by the providers of certified goods or services, or by certified providers of goods or services, and are not generally used by the certifying organization itself. The providers of certified goods or services, or certified providers of goods or services, are considered “authorized users” of the certification mark.

Examples of three types of certification marks

1. Geographic origin

The goods or services are certified to have come from a specific geographic region, as shown by the examples below.1

New York State Grown and Certified stamp with a blue circle and share of state

 

 

 

 

Certified Alaska grown logo with shape of state in green on blue background with circle outline and text in yellow
Logo in black showing the Certified Genuine Idaho Potatoes logo with shape of state inside a circle and text reading Grown in Idaho

Examples of how NEW YORK STATE GROWN & CERTIFIED certification mark is used by two authorized users to show their agricultural and food products were certified as having been grown or processed within New York State per standards set by the NYS Department of Agriculture and Markets.

Gallon of milk showing New York State certified mark

 

Packages of Blue Mountain Creamery Cheese with the Ney Your State Certified stamp

2. Quality, materials, manufacturing standards

The goods or services are certified to have met standards with respect to quality, materials, or how they are manufactured, as shown by the examples of registered certification marks below.2

Red check mark inside a green circle with text reading Certified Onions Inc Chemical Residue Tested
Image
Energy star logo with white text and star shape on a black background
White rectangle shape with black text and logo for Certified California Sustainable Winegrowing

The ENERGY STAR certification mark is used by authorized users to show their products were certified as having met standards for energy efficiency as set by the U.S. Environmental Protection Agency.

Energy star logo on black packaging for a product
Package of light bulbs showing the blue energy star logo on the packaging

3. Work/labor standards

The work or labor on the goods or services was certified to have been performed by a union member or member of another organization or the provider of those services has been certified to have met certain standards, as shown by the examples of registered certification marks below.3

NABCEP Certified system inspector Photovoltaic mark with orange and blue text
Logo for the American Board of Urology with black text on white in shape of a circle
Black text of Florida Registered Paralegal certification mark

Example of how the FLORIDA REGISTERED PARALEGAL FRP certification mark is used by an authorized user to show they have been certified as having met the competency standards for paralegals set by the Florida State Bar and Supreme Court of Florida. 

Front and back of a business card for intellectual property attorneys with the Florida Registered Paralegal logo

Does a certification mark have to include certain wording?

No. Certification marks are not required to be in any specific form or include any particular wording. However, they often include wording such as “certified,” “approved by,” “inspected,” or “conforming to,” and may show what has been certified about the goods and or services.

How does a certification mark differ from a trademark?

A certification mark shows that goods, services, or providers of those goods or services have met certain standards. However, a trademark shows the commercial source or brand of particular goods or services.

For example, if the LG registered trademark belowappears on a dishwasher, it identifies the commercial source or brand of that particular appliance. However, if the U.S. Environmental Protection Agency’s (EPA) ENERGY STAR registered certification mark5 shown below appears on that same dishwasher, it means the EPA certified that appliance has met its energy efficiency standards. The EPA is not manufacturing or selling the appliance; it’s only certifying the appliance met certain standards after being tested at the request of the authorized user. An LG dishwasher would show both its LG registered trademark and the EPA’s ENERGY STAR certification mark. So, a trademark and a certification mark perform different functions and communicate different kinds of information to a consumer.

See the EPA’s registered certification mark and the LG company’s trademark below, and how both marks may be used together on the same product.6

Energy star logo with white text and star shape on a black background
LG logo with red circle with L inside G in white text and LG in large grey text to the right of circle

For more information about differences between certification marks and trademarks, see the Trademark Manual of Examining Procedure (TMEP) sections 1306.011306.01(a)1301.06(b).

1Left to right: U.S. Registration Nos. 5935699, 3625961, 4221401

Left to right: U.S. Registration Nos. 6406229, 4204983, 4260423

Left to right: U.S. Registration Nos. 5636035, 5020201, 3958260

U.S. Registration No. 5319166

U.S. Registration No. 6406229

Left to right: U.S. Registration Nos. 6406229 and 5319166

DISCLAIMER: References to particular trademarks, service marks, certification marks, products, services, companies, and/or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement by the U.S. Government, the U.S. Department of Commerce, the U.S. Patent and Trademark Office, or any other federal agency.

How does a certification mark differ from a collective mark?

Certification marks and collective marks are similar in some ways. Both types of marks are used with goods or services and are owned by an organization that requires certain standards be met. The key differences are highlighted below.

A certification mark certifies that goods, services, or the providers of goods or services meet certain standards set by the certifying organization. Use of a certification mark does not require membership—the providers of the certified goods or services or the certified providers themselves are “authorized users” of the certification mark. 

A collective mark indicates goods or services come from members of a collective organization who meet the organization’s standards for admission. Use of a collective mark requires membership in the collective organization. 

For more information about the difference between these types of marks, see TMEP section 1306.06(a)

For more information about collective marks, see our collective mark webpage.

Who can apply to register a certification mark?

Generally, the organization that confers or awards certification conveyed by the certification mark is the owner of the certification mark. Only this certifying organization can apply to register their certification mark.

The providers of certified goods or services or certified providers are considered “authorized users” of the certification mark, not owners. They are not the proper party to apply for a certification mark. Someone who merely acts as an agent for the certifier, such as an inspector hired by the certifier, also does not own the certification mark.

Can a certifying organization register the same mark as a certification mark and a trademark (or any other type of mark)?

No, because the purpose of each is very different. A certification mark doesn’t indicate the commercial source of a particular good or service like a trademark does, but instead indicates certification of a characteristic common to the goods or services of many persons. Using the same mark for such contradictory purposes would be confusing for consumers. 

So, registering as a certification mark precludes the owner from registering the same mark as any other type of mark for the same goods or services.

For more information about the prohibition of a certification mark being registered as any other type of trademark, see TMEP sections 1306.03(c) and 1306.04(f).

What are the requirements to apply for a certification mark?

Requirements for a complete application:

  • The legal name, physical domicile street address (and mailing address, if different from the domicile address), and email address for each applicant.

  • The legal entity type of each applicant (for example, partnership, joint venture, limited liability company, or corporation).

  • The citizenship of each applicant or the jurisdiction under whose laws each applicant business is organized (U.S. state or foreign country). 

    NOTE: For a U.S. partnership or joint venture, also specify the names and citizenship or jurisdiction of the general partners of the partnership or active members of the joint venture. And for a sole proprietorship, also specify the U.S. state or foreign country of its organization and the name and citizenship of the sole proprietor.

  • description of the certification mark if the mark is stylized or has a design.

  • An English translation or transliteration of non-English wording in your certification mark.

  • A drawing of the certification mark you seek to register.

  • Application fees for each class of goods and services (see the current fee schedule).

  • A filing basis (see below, "What is a ‘filing basis’ and why is it required in a certification mark application?”).

  • registration basis, if appropriate (see below, "What is the difference between a filing basis and a registration basis?")

  • A list of the goods and services that are or will be certified

  • The classification of the goods and/or services being certified. Choose between U.S. Class A for goods or U.S. Class B for services. These are the only classes available for a certification mark. 

If the applicant is, or must be, represented by a U.S.-licensed attorney, the application must include the attorney's name, postal and email addresses, and bar information.

See TMEP section 1306.02 for information about the elements of a complete certification mark application.

What is a “filing basis” and why is it required in a certification mark application?

filing basis is the basis under federal law for filing an application for registration with the USPTO. There must be at least one filing basis in the application. And each filing basis has different legal requirements. 

In the application, the certifying organization may select from the four possible filing bases listed below; however, the filing bases listed under 3 and (4) are rarely used for certification marks:

  1. Use-in-commerce filing basis (under Trademark Act section 1(a)) – means that at the time the application is filed for a certification mark, the certifying organization is currently certifying the goods or services of others, or certifying providers of one or more of the following:

    • Goods that have actually been transported or sold commercially;

    • Services that have actually been rendered; or

    • Work or labor that has actually been performed.

  2. Intent-to-use filing basis (under Section 1(b)) – means that at the time the application is filed the certifying organization is not yet certifying goods or services of others, or providers, but has a bona fide intention to do so in the near future.

  3. Foreign registration filing basis (under Section 44(e)) – means that at the time the application is filed in the United States, the certifying organization owns a foreign trademark registration for the same certification mark in its country of origin to certify the same goods or services of others, or certify providers. The certifying organization must also have a bona fide intention to certify the goods or services of others, or certify providers, in the near future (see intent-to-use basis above).

  4. Foreign application filing basis (under Section 44(d)) – means that at the time the application is filed in the United States, the certifying organization owned an earlier-filed foreign trademark application that was filed for the same certification mark within six months of the U.S. application to certify the same goods or services of others, or certify providers. This filing basis is also called a foreign priority basis because the certifying organization would be requesting a “priority” filing date for its U.S. application—that is, the same date as the foreign application filing date. The certifying organization must also have a bona fide intention to certify the goods or services of others, or certify providers, in the near future (see intent-to-use basis above).

The legal requirements for these four filing bases are specified in the section below called "What are the requirements for each filing basis?". 

Information regarding a Section 66(a) filing basis under the Madrid Protocol that is based on an international registration can be found in TMEP section 1306.02(a)(v) and on the Madrid Protocol for international trademark registration page.

What are the requirements for each filing basis?

An application must specify at least one of the four filing bases below. 

Use-in-commerce filing basis

The certifying organization may file or amend an application to one based on use of the certification mark in commerce under Section 1(a) only if the certification mark is actually used in commerce with all the goods and services listed under this filing basis as of the application filing date. 

When is a certification mark in use in commerce?

A certification mark is used in commerce for goods when:

  • The certifier has certified certain goods;
  • Authorized users have used the certification mark on those goods, packaging for those goods, or displays associated with those goodes (including webpage displays) that comply with the certifier's use requirements; and
  • Those certified goods are actually being sold or transported in commerce in the ordinary course of trade.

A certification mark is used in commerce for services when;

  • The certifier has certified certain services;
  • Authorized users have used the mark in connection with the sale, advertising, or rendering of those services, and the use of the mark complies with the certifier’s use requirements; and
  • Those certified services are actually being rendered in commerce in the ordinary course of trade.

To assert a use-in-commerce filing basis, the application or response must include:  

  1. The following five statements

    • Applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

    • Applicant believes the applicant is the owner of the mark, and that the mark is in use in commerce.

    • Applicant is exercising legitimate control over the use of the mark in commerce.

    • 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.

    • The specimen shows the mark as used in commerce by the applicant’s authorized users.

    • The facts recited in the application are accurate.

  2. certification statement specifying all the characteristics or features being certified about the goods or services (the statement should begin with the wording “The certification mark, as used by persons authorized by the certifier, certifies that the goods/services provided have” or “The certification mark, as used by persons authorized by the certifier, certifies that the provider of goods/services has”).

  3. The date of first use of the certification mark anywhere by an authorized user in connection with the certified goods or services (the date when an authorized user’s goods were first sold or transported, or services were first rendered, under the mark).

  4. The date of first use of the certification mark in commerce by an authorized user in connection with the certified goods or services (the date when an authorized user’s goods were first sold or transported, or services were first rendered under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress).

  5. One specimen showing how an authorized user uses the mark in commerce with the certified goods or services, and, if the specimen was not included in the initial application, the following statement: “The specimen was in use in commerce at least as early as the application filing date.”

  6. A copy of the certification standards governing how the certification mark is used.

  7. Verification, in an affidavit or signed declaration under 37 CFR section 2.20, of the above statements in 1, dates of use in 3 and 4, and the specimen statement in 5, if it was not provided with the initial application.

See TMEP section 1306.02(a)(i) for information about the required elements for the use-in-commerce filing basis.

Intent-to-use filing basis

The certifying organization may file or amend an application to one based on a bona fide intention to use the certification mark in commerce under Section 1(b). However, this filing basis is not a basis for registration, so the certification mark will not register until the application is properly amended to one based on use in commerce by filing a timely and acceptable allegation of use (amendment to allege use or statement of use), which requires that the certifying organization establish use in commerce. 

The certifying organization may file or amend an application to one based on a bona fide intention to use the certification mark in commerce under Section 1(b) if the certifying organization can in good faith agree to the following information and statements, verifying 2.b through 2.d below in an affidavit or declaration, in the application or response:

  1. certification statement specifying all the characteristics or features the certifying organization will be certifying about the goods or services (the statement should begin with the wording “The certification mark, as used by persons authorized by the certifier, certifies that the goods/services provided have” or “The certification mark, as used by persons authorized by the certifier, certifies that the provider of goods/services has”).

  2. The following four statements:

    1. Applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

    2. Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce.

    3. 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. 

    4. The facts recited in the application are accurate.

For more information about the intent-to-use filing basis, see TMEP section 1306.02(a)(ii).

For more information about allegations of use, see TMEP sections 1104-1104.11, and 1109-1109.18.

For more information about the general requirements for amending an intent-to-use application to use in commerce, see our intent-to-use applications page.

Foreign registration filing basis (rarely used for a certification mark)

The certifying organization may file or amend the U.S. application to one based on a foreign registration under Section 44(e) if, in addition to the requirements under Section 1(b) intent-to-use filing basis above, the application or response includes:  

  • copy of the foreign registration, which is current and in force, for the same certification mark for the same goods or services from the certifying organization’s “country of origin.”

    NOTE: The country of origin is the country where the certifying organization is incorporated or legally organized or has a bona fide and effective industrial or commercial business. The country of origin must also be a party to an international treaty or other international agreement that the United States has signed and agreed to and which extends reciprocal trademark registration rights by law to U.S. nationals.

  • An English translation of the foreign registration if it is not in English, signed by the translator.

See TMEP section 1306.02(a)(iv) for information about the required elements for the foreign registration filing basis.

Foreign application filing basis (rarely used for a certification mark)

Although the certifying organization may file an application based on a foreign application and receive a priority filing date, this filing basis is not a basis for registration, so the certification mark will not register until the application is properly amended to one based on use in commerce or a foreign registration basis. For more information on these bases, see the sections above on requirements for use-in-commerce filing basis and foreign registration filing basis.

The certifying organization may file or amend the U.S. application to request a priority filing date under section 44(d) based on an earlier-filed foreign application if, in addition to the requirements under Section 1(b) intent-to-use basis above, the application or response includes: 

  • A "claim of priority,” within six months of the filing date of the foreign application; and

  • The filing date, serial number, and country name of the first legitimately filed foreign application, or the following statement: “The U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any earlier-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.”

See TMEP section 1306.02(a)(iii) for information about the required elements for a foreign application filing basis.

Can I have more than one filing basis in my application?

Yes, as long as you meet the requirements for each filing basis claimed under Sections 1 or 44However, if the application was filed based on Section 66(a), it can’t be combined with another filing basis. For more information about multiple bases, see our basis page and TMEP section 1306.02(a)(vi).

What is the difference between a filing basis and a registration basis?

filing basis is the basis under federal law for filing an application for registration with the USPTO. Each application must include at least one filing basis, and each filing basis has different legal requirements. See above for more information about filing bases. 

A registration basis is the basis for registering a mark with the USPTO. There are two registration bases;

  • Use in commerce under Section 1(a).
  • Foreign registration under Section 44(e).

If the certifying organization filed an application based on Section 1(b), an intent to use the mark in the near future, or Section 44(d), based on a foreign application, then the certifying organization must also satisfy the requirements for at least a use-in-commerce or Section 44(e) basis before the certification mark may register.

For more information about the difference between these types of bases, see TMEP sections 806 and 1003.03.

What if I accidentally filed an application for the wrong type of mark?

Generally, this can be fixed. The certifying organization can make changes to the application to meet the requirements above. For example, the requirement for specifying a class will need to be fixed because certification marks are uniquely classified in U.S. Classes A (for goods) and B (for services). Classification and any other necessary corrections can be made by submitting a Voluntary Amendment or Response to Examining Attorney Office Action form online through our electronic filing system.

For more information about the requirements for a filing basis, see TMEP section 1306.02(a) through (a)(iv)(A).

Can a registered certification mark prevent registration of similar trademarks due to a likelihood of confusion?

Yes, if the relevant persons (for example, authorized users and prospective authorized users of the certification mark as well as consumers and prospective consumers of the goods or services) are likely to believe that the trademark owner’s goods or services were certified or licensed by or in some way associated with the certifying organization. 

See TMEP section 1306.05(g) for more information about likelihood of confusion between a certification mark and a trademark.

Need to respond to an office action about your certification mark?

Respond online using our electronic filing system. Follow the specific instructions below for certification marks, or get general information about responding to office actions.

To amend application to a use-in-commerce filing basis, Section 1(a)

The instructions below presume there is more than one issue to respond to. To respond, complete the form to address all issues in the office action and, at the end of the form, the correct party must properly sign it. It is important that the proper party sign the response, otherwise we may not accept it and you could miss the deadline for responding to an office action. For more information about who may sign a response, review the office action.

When submitting a verified statement or specimen, the online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” or “Request for Reconsideration Signature” section. Skipping the declaration signature in the form will likely result in the refusal of the specimen and/or a requirement for a verified statement.

To amend the filing basis to a use-in-commerce basis under Section 1(a), correct classification, add a certification statement, and add certification standards: 

  1. If responding to a nonfinal office action, use the Response to Examining Attorney Office Action form. If responding to a final office action, use the Request for Reconsideration after Final Action form.

  2.  Answer "Yes" to questions on the form regarding changing the filing basis and existing class number, modifying the identification, and adding a miscellaneous statement.

  3.  Under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following: 

    a. Check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”

    b. Immediately under “Original International Class,” select next to “International Class” either A, if you have goods being certified, or B, if you have services being certified, from the drop-down menu.

    c. Check the box next to "Filing Basis Section 1(a)."

    d. Enter dates of first use (anywhere and in commerce) in the two boxes below the “Filing Basis Section 1(a)” statement using the format MM/DD/YYYY.

    e. Under “Specimen File,” click the gray button to attach a specimen (an image file attachment may not exceed 5 megabytes for a JPG file or 30 megabytes for a PDF file).

    f. Describe what the specimen consists of in the box below, and provide the additional required information below that, if necessary, for a specimen that is a webpage.

    g. Check the box next to the following statement below the specimen description and webpage information: “Check this box if specimens are now being submitted or were previously submitted unverified in the initial application.”

    h. Uncheck the box next to any previous filing basis that was selected (skip this step if not applicable).

  4. Under the heading “Additional Statement(s),” scroll down and check the box for a “Miscellaneous Statement.” 

    a. Enter a certification statement in the blank text box below the “Miscellaneous Statement.” See immediately above the text box for a suggested format for the certification statement.

    b. Click on the gray bar below the “Miscellaneous Statement” text box to attach your certification standards.

To amend application to an intent-to-use filing basis, Section 1(b)

The instructions below presume there is more than one issue to respond to. To respond, complete the form to address all issues in the office action and, at the end of the form, the correct party must properly sign it. It is important that the proper party sign the response, otherwise we may not accept it and you could miss the deadline for responding to an office action. For more information about who may sign a response, review the office action.

WARNING: When submitting a verified statement for this filing basis, the online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” or “Request for Reconsideration Signature” section. Skipping signing the declaration in the form could result in the USPTO issuing a requirement for a verified statement.

To amend the filing basis to an intent-to-use basis under Section 1(b), correct classification, and add a certification statement:  

  1. If responding to a nonfinal office action, use the Response to Examining Attorney Office Action form. If responding to a final office action, use the Request for Reconsideration after Final Action form.

  2. Answer "Yes" to questions on the form regarding changing the filing basis and existing class number, modifying the identification, and adding a miscellaneous statement.

  3.  Under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following:

    a. Check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”

    b. Immediately under “Original International Class,” select next to “International Class” either A, if you have goods being certified, or B, if you have services being certified, from the drop-down menu.

    c. Check the box next to “Filing Basis Section 1(b).”

    d. Uncheck the box next to any previous filing basis that was selected (skip this step if not applicable).

  4. Under the heading "Additional Statement(s)," scroll down and check the box for a "Miscellaneous Statement." Then enter a certification statement into the blank text box below. See immediately above the text box for a suggested format for the certification statement.

To amend application to a foreign registration filing basis, Section 44(e)

The instructions below presume there is more than one issue to respond to. To respond, complete the form to address all issues in the office action and, at the end of the form, the correct party must properly sign it. It is important that the proper party sign the response, otherwise we may not accept it and you could miss the deadline for responding to an office action. For more information about who may sign a response, review the office action.

WARNING: When submitting a verified statement for this filing basis, the online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” or “Request for Reconsideration Signature” section. Skipping signing the declaration in the form could result in the USPTO issuing a requirement for a verified statement.

To amend the filing basis to a foreign registration filing basis under Section 44(e), correct classification, and add a certification statement:  

  1. If responding to a nonfinal office action, use the Response to Examining Attorney Office Action form. If responding to a final office action, use the Request for Reconsideration after Final Action form.

  2. Answer "Yes" to questions on the form regarding changing the filing basis and existing class number, modifying the identification, and adding a miscellaneous statement.

  3. Under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following:

    a. Check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”

    b. Immediately under “Original International Class,” select next to “International Class,” either A, if you have goods being certified, or B, if you have services being certified, from the drop-down menu.

    c. Check the box next to “Filing Basis Section 44(e).”

    d. Provide the required data regarding the foreign registration in the ensuing boxes and attach a copy of the foreign registration (or proof of its renewal, if appropriate).

    e. Uncheck the box next to any previous basis that was selected (skip this step if not applicable).

  4. Under the heading “Additional Statement(s),” scroll down and check the box for a “Miscellaneous Statement.” Then enter a certification statement into the blank text box below. See immediately above the text box for a suggested format for the certification statement.

To amend application to a foreign application filing basis, Section 44(d)

The instructions below presume there is more than one issue to respond to. To respond, complete the form to address all issues in the office action and, at the end of the form, the correct party must properly sign it. It is important that the proper party sign the response, otherwise we may not accept it and you could miss the deadline for responding to an office action. For more information about who may sign a response, review the office action.

WARNING: When submitting a verified statement for this filing basis, the online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” or “Request for Reconsideration Signature” section. Skipping signing the declaration in the form could result in the USPTO issuing a requirement for a verified statement.

To amend the filing basis to a foreign application basis under Section 44(d), correct classification, and add a certification statement:  

  1. If responding to a nonfinal office action, use the Response to Examining Attorney Office Action form. If responding to a final office action, use the Request for Reconsideration after Final Action form.

  2. Answer "Yes" to questions on the form regarding changing the filing basis and existing class number, modifying the identification, and adding a miscellaneous statement.

  3. Under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following:

    a. Check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”

    b. Immediately under “Original International Class,” select next to “International Class,” either A, if you have goods being certified, or B, if you have services being certified, from the drop-down menu.

    c. Check the box next to “Filing Basis Section 44(d).”

    d. Provide the required data regarding the foreign application in the ensuing boxes.

    e. Uncheck the box next to any previous filing basis that was selected (skip this step if not applicable).

  4. Under the heading, “Additional Statement(s),” scroll down and check the box for a “Miscellaneous Statement.” Then enter a certification statement into the blank text box below. See immediately above the text box for a suggested format for the certification statement.