Extensions of International Registrations under the Madrid Protocol into the United States must include a sworn declaration attesting that the applicant has a bona fide intention to use the mark in U.S. commerce. The declaration, found on WIPO’s form MM18, also includes a statement that declarant believes the applicant is entitled to use the mark in U.S. commerce and that, to the best of his/her knowledge and belief, no other party has the right to use the mark or a confusingly similar mark. This form has generated much confusion among practitioners outside the U.S. In particular, many mistakenly believe that non-U.S. attorneys are qualified to sign the declaration on applicant’s behalf, when that is not the case. Below we explain who may in fact sign the declaration.
The language in form MM18 states that the declaration of use must be signed by:
(1) the applicant or a person with legal authority to bind the applicant; or
(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 who is authorized to practice before the USPTO, who has an actual or implied power of attorney from the applicant.
Category 1 includes officers, partners or other officials within applicant's corporation, partnership or other entity structure. Category 2 includes those with firsthand knowledge of the facts. An outside counsel, presumably, can only have second-hand knowledge of the facts, as the client reports the facts to him/ her. Category 3 refers to active U.S. attorneys and, in limited circumstances, Canadian attorneys.
Inaccurate declarations may void an application so care should be taken when signing the application. Since the applicant has the best knowledge of its future business plans, and therefore, its intent to use the mark within the United States, it should sign the declaration. Moreover, if the declaration’s accuracy is ever challenged by third parties, the signatory may be called to testify and therefore, having good knowledge of the intent or actual use of the mark and the scope of goods and services in the application is extremely important.
Therefore, we strongly encourage that you instruct your clients to carefully review and sign the declaration of use found on form MM18.
Contact our attorneys should you have further questions about form MM18 or other aspects of U.S. practice.
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