The term "type of application" refers to the kind of application by which registration is requested, e.g., whether the application is a single-class application or a multiple-class application, or whether registration is sought on the Principal Register or on the Supplemental Register.
See
TMEP Chapter 1300
regarding the examination of applications for different types of marks.
A single-class application limits the goods or services for which registration is sought to goods or services in one of the classes in the classification schedules. The application may recite more than one item if the items recited are all classified in one class. See
TMEP §§1401
et seq. for additional information about classification.
A combined or multiple-class application is an application to register the mark for items classified in two or more classes. The applicant must pay a filing fee for each class. The class numbers and corresponding goods or services must be listed separately, from the lowest to the highest number.
See
TMEP §§1403
et seq. for further information about combined applications.
The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051 through 1072). When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act. The advantages of owning a registration on the Principal Register include the following:
• Constructive notice to the public of the registrant's claim of ownership of the mark (15 U.S.C. §1072);
• A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b) and 1115(a));
• A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c);
TMEP §201.02.)
;
• The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124);
• The registrant's exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," subject to certain statutory defenses (15 U.S.C. §§1065 and 1115(b)); and
• The use of the U.S. registration as a basis to obtain registration in foreign countries.
If the applicant seeks registration on the Principal Register, the application should state that registration is requested on the Principal Register. However, if the applicant does not specify a register, the United States Patent and Trademark Office ("USPTO") will presume that the applicant seeks registration on the Principal Register.
Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant's goods or services, may be registered on the Supplemental Register. Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091 through 1096, provide for registration on the Supplemental Register. This is a continuation of the register provided for in the Act of March 19, 1920. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in §26 of the Act, 15 U.S.C. §1094.
If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.
See
TMEP §§815
and
816
et seq. regarding examination procedure relating to the Supplemental Register.
An applicant may not seek registration on both the Principal and the Supplemental Register in the same application. If an applicant requests registration on both the Principal and the Supplemental Register in the same application, the examining attorney must require that the applicant amend to specify only one register, or file a request to divide under 37 C.F.R. §2.87.
A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
Applications under §66(a) of the Trademark Act will be sent to the USPTO electronically by the International Bureau of the World Intellectual Property Organization ("IB").
The USPTO prefers that applicants file applications under §1 or §44 of the Trademark Act through the Trademark Electronic Application System ("TEAS"), available at http://www.uspto.gov, or on the USPTO's pre-printed scannable form. The applicant may obtain the USPTO's form by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.
Trademark applications may not be filed by facsimile ("fax") transmission. 37 C.F.R. §2.195(d)(1);
TMEP §306.01.
The USPTO strongly discourages self-created forms, but will accept them if they meet the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see
TMEP §202).
If a self-created form is used, the application should be on letter size (i.e., 8½ inches (21.6 cm.) by 11 inches (27.9 cm.)) paper, typewritten, double spaced, with margins of at least 1½ inches (3.8 cm.) at the left and top of the pages. The application should be written on only one side of the paper.
The application must be in the English language. 37 C.F.R. §2.32(a).
The USPTO does not generally require the submission of original documents, so the applicant may file a copy of a signed application. 37 C.F.R. §2.193(c)(1)(ii);
TMEP §302.01.
An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce. Normally the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs. See
TMEP §§1201
et seq. regarding ownership, and
TMEP §§501
and
502
et seq. regarding changes of ownership.
If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned. 37 C.F.R. §2.71(d). See
TMEP §803.06
and cases cited therein.
Applicants may be natural persons or juristic persons. Juristic persons include corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law. 15 U.S.C. §1127. An operating division, or the like, that is merely an organizational unit of a company and not a legal entity that can sue and be sued, may not own or apply to register a mark. See
TMEP §1201.02(d).
Nations, states, municipalities, and other related types of bodies operating with governmental authorization may apply to register marks that they own. See NASA v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975); In re U.S. Department of the Interior, 142 USPQ 506 (TTAB 1964).
The question of whether an application can be filed in the name of a minor depends on state law. If the minor can validly enter into binding legal obligations in the state in which he or she is domiciled, then the application may be filed in the name of the minor. Otherwise, the application should be filed in the name of a parent or legal guardian, clearly setting forth their status as a parent or legal guardian. If the record indicates that an application has been filed in the name of a minor, the examining attorney should inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled, and require correction of the entity statement, if necessary.
See
TMEP Chapter 500
regarding assignments, name changes, and issuance of a registration in the name of an assignee or in an applicant's new name.
See also
TMEP §§1002
et seq. regarding eligibility to file an application under §44 of the Trademark Act, 15 U.S.C. §1126, and
TMEP §1901
regarding eligibility to file a request for an extension of protection of an international registration to the United States under §66(a) of the Act, 15 U.S.C. §1141f(a).
The name of the applicant should be set out in its correct legal form. For example, a corporate applicant should be identified by the name set forth in the articles of incorporation.
If the applicant's legal name includes the assumed name under which it does business, an assumed name designation should be used to connect the actual name with the assumed name. Assumed name designations include "d.b.a." (doing business as), "a.k.a." (also known as), and "t.a." (trading as). The particular assumed name designation used is optional. Only the abbreviation of the assumed name designation will be printed in the Official Gazette and on the certificate of registration. If an applicant gives the assumed name designation in full, the abbreviation will automatically be used for printing purposes.
If the applicant is an individual person who is doing business under an assumed business name, the individual's name should be set forth, followed by an assumed name designation (e.g., d.b.a., a.k.a., or t.a.) and by the assumed business name.
If an individual indicates that he or she is doing business under a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the USPTO will presume that relevant state law permits such a practice. The assumed name will be printed on the registration certificate.
If the record is ambiguous as to whether a corporation or an individual owns the mark, the examining attorney must require the applicant to clarify the record regarding ownership. However, in view of the broad definition of a "person properly authorized to sign on behalf of an applicant" in 37 C.F.R. §2.33(a) (see
TMEP §804.04)
, the fact that the title of the person signing an application refers to a different entity is not in itself considered an ambiguity that would warrant an inquiry as to who owns the mark.
See
TMEP §803.03(a)
for information about identifying an individual applicant's entity.
See
TMEP §§803.06
and
1201.02(c)
regarding Office policies regarding correction of an applicant's name and entity.
If a partnership, joint venture, or other "firm" has been organized under a particular business name, the application should be filed in that name. If the partnership or firm has not been organized under a business name, then the names of the members should be listed as though they composed a company name. If a partnership or joint venture is doing business under an assumed name, this may be indicated, using an assumed name designation. See
TMEP §803.02
regarding assumed name designations.
See
TMEP §803.03(b)
for information about identifying a partnership or joint venture as a legal entity.
If the applicant is a corporation, the official corporate name must be set out as the applicant's name. Listing an assumed business name is optional. The name of a division of the applicant should not be included in or along with the applicant's name. If the applicant wishes to indicate in the application that actual use of the mark is being made by a division of the applicant, the applicant may provide a statement that "the applicant, through its division [specify name of division], is using the mark in commerce." This statement should not appear in the preamble in conjunction with the listing of the applicant's name, and will not be printed on the registration certificate.
In unusual situations, one corporation may also be doing business under another name, even another corporate name. This sometimes happens, for example, when one corporation buys out another. In the unusual situation where a corporate applicant provides a DBA that includes a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its official corporate name, the USPTO will presume that relevant state law permits such a practice. The DBA will be printed on the registration certificate.
Associations should be identified by the full, official name of the association.
See
TMEP §803.03(c)
for information about identifying a corporation or association as a legal entity.
Immediately after the applicant's name, the application should set out the applicant's form of business, or legal entity, such as partnership, joint venture, corporation, or association. The words "company" and "firm" are indefinite for purposes of designating an applicant's legal entity, because those words do not identify a particular type of legal entity in the United States. (However, the word "company" is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See
TMEP §803.03(i).)
Whether the Office will accept the identification of an applicant's entity depends on whether that entity is recognized by the applicant's state of domicile.
If other material in the record shows a different type of entity than is set out in the written application, the examining attorney should ask for an explanation, and require amendment if necessary. However, in view of the broad definition of a "person properly authorized to sign on behalf of an applicant" in 37 C.F.R. §2.33(a) (see
TMEP §804.04)
, no explanation is usually required merely because the person signing a declaration has a title that refers to a different type of entity. See
TMEP §§803.06
and
1201.02(c)
regarding Office policies governing correction of an applicant's name.
For an individual, it is not necessary to specify "individual," but it is acceptable to do so. The applicant may state that he or she is doing business under a specified assumed company name.
TMEP §803.02.
An applicant may identify itself as a sole proprietorship. If an applicant does so, the applicant must also indicate the state where the sole proprietorship is organized, in addition to the name and citizenship of the sole proprietor.
If the application specifically identifies the applicant as a sole proprietorship and indicates the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor, the USPTO will accept the characterization of the entity without further action. On the other hand, if the application refers to a sole proprietorship but lacks some of the necessary information or is ambiguous as to whether the applicant should be identified as a sole proprietorship or as an individual, the examining attorney must require appropriate clarification of the entity type.
The application of a partnership or a joint venture, after setting forth the applicant's name and entity, should specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii). In addition, the applicant should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §2.32(a)(3)(iii). These requirements apply to both general and limited partnerships. They also apply to a partnership that is a general partner in a larger partnership. Limited partners or silent or inactive partners need not be listed. The following format should be used:
"_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________."
In the case of a partnership consisting of ten or more general partners, if the partnership agreement provides for the continuing existence of the partnership in the event of the addition or departure of specific partners, the Office will require that the applicant provide the names, legal entities, and national citizenship (or the state or country of organization) of the principal partners only. If the principal partners exceed ten, the applicant need list only the first ten principal partners. If there is no class of principal partners, the applicant may list any ten general partners.
Upon death or dissolution of a partner or other change in the members that compose a partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership agreement provides for continuation of the partnership in the event of changes in partners. This same principle also applies to joint ventures. See
TMEP Chapter 500
regarding changes of ownership.
The term "firm" is not an acceptable designation of the applicant's entity because it does not have a universally understood meaning. The examining attorney should require a definite term such as "partnership" or "joint venture" when it is necessary to identify these entities.
In the United States, the term "corporation" is proper for juristic entities that are incorporated under the laws of the various states or under special federal statutes. Likewise, "association" is a proper term for juristic entities organized under state laws or federal statutes that govern this form of organization. The term "company" is indefinite for describing a United States entity because it does not have a specific meaning as indicating a particular type of entity, but is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See
TMEP §803.03(i)
regarding foreign companies.
In addition to specifying that an applicant is a corporation, the application must specify the applicant's state or country of incorporation. It is customary to follow the applicant's name by the words "a corporation of the state (or country) of . . . ." This also applies to a nonprofit or tax-exempt corporation. If no state or country of incorporation is given for an applicant corporation, or the incorrect state or country of incorporation is given, this defect may be corrected by amendment. The amendment does not have to be verified.
For an association, the application must specify the state or country under whose laws the applicant is organized or exists. The applicant should also indicate whether the association is incorporated or unincorporated. If a corporation or association exists by virtue of a specific state or federal statute, this should be stated. Verification is not required.
An application may be filed in the name of joint applicants or joint owners. Ex parte Pacific Intermountain Express Co., 111 USPQ 187 (Comm'r Pats. 1956); Ex parte Edward Taylor and Isabelle Stone Taylor doing business as Baby's Spray-Tray Co., 18 USPQ 292 (Comm'r Pats. 1933).
An application by joint applicants must be verified by all the applicants, since they are individual parties and not a single entity. However, if only one of the joint applicants signs the verification, the Office will presume that he or she is signing on behalf of all the joint applicants, and will not require an additional verification or declaration unless there is evidence in the record indicating that the party who signed the application was not in fact authorized to sign on behalf of all the joint applicants under 37 C.F.R. §2.33(a). See
TMEP §804.04
regarding persons authorized to sign a verification on behalf of an applicant, and
TMEP §712.01(a)(i)
regarding the proper party to sign a response to an Office action filed by joint applicants who are not represented by an attorney.
Joint applicants are not the same as a joint venture. A joint venture is a single applicant, in the same way that a partnership is a single applicant. See
TMEP §803.03(b)
regarding joint ventures.
If a trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. Thus, the examining attorney should require that the trust's application be captioned as follows:
The Trustees of the XYZ Trust, a California trust, the trustees comprising John Doe, a U.S. citizen, and the ABC Corporation, a Delaware corporation.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. Then the state under whose laws the trust exists must be set forth. Finally, the names and citizenship of the individual trustees must be listed.
The same format generally applies to conservatorships and estates as follows:
The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a U.S. citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, U.S. citizens.
Most states recognize an entity commonly identified as a "business trust," "Massachusetts trust," or "common-law trust." A business trust has attributes of both a corporation and a partnership. Many states have codified laws recognizing and regulating business trusts; other states apply common law. The Office must accept the entity designation "business trust," or any appropriate variation provided for under relevant state law.
The business trust is created under the instructions of the instrument of trust. Generally, the "trustee" has authority equivalent to an officer in a corporation. Laws vary to some extent as to the authority conferred on various individuals associated with the business trust.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. The state under whose laws the trust exists, and the names and citizenship (or state of incorporation or organization) of the individual trustees, must also be set forth. Accordingly, the examining attorney should require that the business trust's application be captioned as follows:
The Trustees of the DDT Trust, a California business trust, the trustees comprising Sue Smith, a U.S. citizen, and the PDQ Corporation, a Delaware corporation.
For the purpose of service of process, the business trust is essentially like a corporation. Therefore, it is not necessary to identify the beneficiaries or equitable owners of the business trust in identifying the entity.
It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis. The following are just a few examples of acceptable governmental entities.
Department of the Air Force, an agency of the United States.
Maryland State Lottery Agency, an agency of the State of Maryland.
City of Richmond, Virginia, a municipal corporation organized under the laws of the Commonwealth of Virginia.
These examples are not exhaustive of the entity designations that are acceptable.
The structure of educational institutions varies significantly. The following are examples of acceptable university entities:
Board of Regents, University of Texas System, a Texas governing body.
University of New Hampshire, a nonprofit corporation of New Hampshire.
Again, these examples are not exhaustive of the entity designations that are acceptable.
The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. The following are examples of acceptable descriptions of banking institutions:
First American Bank of Virginia, a Virginia corporation.
Pathway Financial, a federally chartered savings and loan association.
This is not an exhaustive listing of acceptable entity designations.
Most of the states have amended their laws to recognize an entity
commonly identified as a “limited liability company.” The entity
has attributes of both a corporation and a partnership. Therefore, the Office
must accept the entity designation “limited liability company,”
or any appropriate variation provided for under relevant state law. The applicant
should indicate the state under whose laws the limited liability company is
established. For the purpose of service of process, the limited liability
company is like a corporation. Therefore, it is not necessary to list the
“members” or owners of the limited liability company when identifying
the entity.
See
TMEP §712.01(a)(vii)
regarding the proper party to sign
a response to an Office action filed by a limited liability company that is
not represented by an attorney.
In designating the legal entity of foreign applicants, acceptable terminology is not always the same as for United States applicants. The word "corporation" as used in the United States is not necessarily equivalent to juristic entities of foreign countries; the word "company" is sometimes more accurate. If the applicant is from the United Kingdom or another commonwealth country (e.g., Canada or Australia) and the term "company" is used, no inquiry is needed. In any other case, the examining attorney must clarify what type of entity is applying.
A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so. The examining attorney should inquire further into the specific nature of a foreign legal entity if it is not clear that it is in fact a designation of legal entity in the particular country. The examining attorney may request a description of the nature of the foreign entity, if necessary.
Listed below are common terms used by several foreign countries to identify commercial entities.
France
A "Société anonyme" (S.A.) is a joint stock company whose capital is divided into shares. An S.A. is similar to a corporation.
A "Société a responsabilité limitée" (S.A.R.L.) is a limited liability company. The S.A.R.L. is analogous to a small closely held American corporation.
A "Société en nom collectif" is a general partnership. Each partner represents the firm and their liability is unlimited.
A "Société en commandite simple" is a special partnership very similar to an American limited partnership.
A "Société en commandite par actions" is a special partnership by shares and occupies a position between a limited partnership (société en commandite simple) and corporation (société anonyme).
A Société par actions simplifée (SAS) is a simplified stock company with limited liability, which has the legal status of a corporation, with a more flexible structure for management and administration than the S.A.
Germany
The "Aktiengesellschaft" (A.G.) is a joint stock company, which can also be loosely described as a corporation.
The "Gesellschaft mit beschrankter Haftung" (G.m.b.H.) is a company with limited liability.
The "Kommanditgesellschaft" (K.G.) is a limited partnership whose entity survives even though the partners might change. It is not necessary to list the names of the partners.
The "Offene Handelsgellschaft" (O.H.G.) is a type of German partnership that is comparable to a United States partnership. Thus, all relevant information with respect to the partnership must be provided.
German law permits a business to be conducted by an individual with the assets of the business held by the "company" in the name of the company, not by the proprietor as an individual. This form of business is generally referred to as a "Firma." However, "Firma" is a broad term that may also connote other situations and the examining attorney should ascertain, if there is any doubt, that a sole proprietorship form of business is intended when the term "Firma" is used.
The "Stiftung" is a foundation having some attributes of a corporation but being more in the nature of a trust. It is governed by a Board of Management, two members of which are denominated Mandatory and Deputy Mandatory. See Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 167 USPQ 641, 642 n.6 (2d Cir. 1970), cert. denied, 403 U.S. 905, 170 USPQ 1 (1971).
Italy
A "Societa per azioni" is analogous to an American corporation.
A "Societa a responsabilita limitata" is the equivalent of a joint stock company with limited liability.
A "Societa in nome collettivo" is a general partnership whose members have unlimited liability for all its obligations.
A "Societa semplice" is a simple partnership. This form of partnership need not be made public as long as there is an agreement between the partners.
"Societa cooperativa" is a cooperative society. This type of entity may be incorporated with either limited or unlimited liability, but the society's name must bear a qualification as to whether it is a limited or unlimited cooperative.
Japan
A "Kabushiki Kaisha" most closely resembles a United States joint stock corporation. This type of entity is incorporated and will issue shares.
A "Yugen Kaisha" is similar to a United States closely held corporation. It is a small corporation that may not surpass certain specified capitalization or numbers of members.
A "Gomer Kaisha" is an entity that is established by formal legal documents. However, all members are jointly and severally liable for the obligations of the firm in the event of bankruptcy, similar to a United States partnership.
A "Goshi Kaisha" is similar to the "Gomer Kaisha" listed above. It differs to the extent that members may have either unlimited or limited liability for the corporate obligations.
Spain
A "Sociedad regular colectina" is a regular collective company and is similar to an American partnership.
A "Sociedad de responsabilidad limitada" is a limited liability company and may be identified as a joint stock company with limited liability.
A "Sociedad anonima" is a joint stock corporation and may be identified as a corporation.
United Kingdom and Other Commonwealth Countries
The word "company" is commonly used in the United Kingdom to identify juristic entities (similar to United States corporations) organized under the law of that country, and thus the word "company" is an acceptable entity designation for applicants from that country.
The same is true for other Commonwealth countries, such as Canada and Australia.
There are two types of limited liability companies in Great Britain: (1) public limited companies, which would be indicated by using "PLC," "plc" or "Public Limited Company;" and (2) private limited companies that use the designation "Limited" or "Ltd." A public limited company in Wales uses the designation "Cwmni & Cyfyngedig Cyhoeddus" or "CCC."
A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant's entity.
Under 37 C.F.R. §2.32(a)(3), an application for registration must specify the applicant's citizenship or the state or nation under whose laws the applicant is organized. If ambiguous terms such as "American" are used, the examining attorney must require the applicant to clarify the record by setting forth the required information with greater specificity (e.g., "United States").
An individual applicant should set forth the country of which he or she is a citizen. Current citizenship information must be provided; a statement indicating that the applicant has applied for citizenship in any country is not relevant or acceptable. If an individual is not a citizen of any country, a statement to this effect is acceptable.
If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate. It is Office policy to print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the Office will indicate only one country of citizenship for each person.
For a corporation, the application must set forth the state or country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).
For an association, the application must set forth the state or country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii).
For a partnership or other firm, the application must set forth the state or country under which the partnership is organized, and provide citizenship information for each general partner in the partnership or active member in the firm. 37 C.F.R. §2.32(a)(3)(iii). This requirement also applies to a partnership that is a general partner in a larger partnership. See
TMEP §803.03(b)
for the proper format for identifying a partnership.
For joint applicants or a joint venture, the application should set forth the citizenship or state or country of organization of each party.
The written application must specify the applicant's address. 37 C.F.R. §2.32(a)(4). Addresses should include United States post office ZIP code numbers or their foreign equivalents. The applicant's address may include a post office box.
For an individual, the application must set forth either the business address or the residence address.
If the application sets out more than one address, the applicant should designate the address to be included on the registration certificate.
For a partnership or other firm, only the address of the business need be set forth -- not the addresses of the partners or members.
For a corporation or association, the business address should be set forth. If the corporation's business address is not in its state of incorporation, the applicant should set out the address where the applicant is domiciled.
For joint applicants, the application should include addresses for each party.
The application must also include an address for correspondence concerning the application. See 37 C.F.R. §§2.18 and 2.21(a)(2). This is referred to as the correspondence address. See
TMEP §§603
et seq.
While an application can be amended to correct an inadvertent error in the manner in which an applicant's name is set forth (see
TMEP §1201.02(c))
, an application cannot be amended to substitute another entity as the applicant. If the application was filed in the name of a party who had no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration must be refused. 37 C.F.R. §2.71(d);
TMEP §1201.02(b).
Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff'd, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Lettmann, 183 USPQ 369 (TTAB 1974); Dunleavy v. Koeppel Steel Products, Inc., 114 USPQ 43 (Comm'r Pats. 1957), aff'd, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Richardson Corp. v. Richardson, 51 USPQ 144 (Comm'r Pats. 1941); Celanese Corporation of America v. Edwin Crutcher, 35 USPQ 98 (Comm'r Pats. 1937). The Office will not refund the application filing fee in such a case.
A void application cannot be cured by amendment or assignment. The true owner may file another application (including a filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, he or she may file another application (including a filing fee) at that time.
See
TMEP §1201.02(c)
for examples of correctable and non-correctable errors in identifying the applicant, and
TMEP §1201.02(e)
and
TMEP Chapter 500
regarding the situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.
An application must include a statement that is verified by the applicant. 15 U.S.C. §§1051(a)(3) and 1051(b)(3); 37 C.F.R. §2.32(b).
In applications under application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See
TMEP §§804.01
et seq. regarding the form of the oath or declaration,
TMEP §804.02
regarding the essential allegations required to verify an application for registration of a mark, and
TMEP §804.04
regarding persons properly authorized to sign a verification on behalf of an applicant.
In §66(a) applications, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). See
TMEP §804.06.
The format of the verification in an application under §1 or §44 of the Trademark Act may be: (1) the classical form for verifying, which includes an oath (jurat) (see
TMEP §804.01(a))
; or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see
TMEP §804.01(b)).
The verification is placed at the end of the application. It should first set forth the venue; followed by the signer's name (or the words "the undersigned"); then the necessary statements (
TMEP §804.02)
; concluding with signature. After the signature there should be the jurat for the officer administering the oath, and an indication of the officer's authority (such as notarial seal).
The form of the verification depends on the law of the jurisdiction where the document is executed, so variations of the above form are acceptable. If there is a question as to the validity of the verification, the examining attorney should ask the applicant if the verification complies with the laws of the applicant's jurisdiction. See
TMEP §804.01(a)(i)
regarding verifications made in a foreign country.
If the verification is notarized but does not include the notarial seal, the examining attorney must require a substitute affidavit or declaration under 37 C.F.R. §2.20.
If the verification is notarized but has not been dated, the applicant must submit either a statement from the notary public attesting to the date of signature and notarization, or a substitute affidavit or declaration under 37 C.F.R. §2.20.
Verification (with oath) made in a foreign country may be made (1) before any diplomatic or consular officer of the United States, or (2) before any official authorized to administer oaths in the foreign country. In those foreign countries that are members of The Hague Convention Abolishing the Requirement of Legislation for Foreign Public Documents, a document verified before a foreign official should bear or have appended to it an apostille (i.e., a certificate issued by an official of the member country).
Member countries, territories, and Departments in Europe participating in this Convention are: Anqulla, Antigua & Barbuda, Argentina, Armenia, Australia, Austria, Bahamas, Bailiwick of Guernsey, Barbados, Belarus, Belgium, Belize, Bermuda, Bosnia & Herzegovina, Botswana, British Antarctic, British Guiana (Guyana), British Soloman Islands, Cayman, Croatia, Cyprus, Dominica, El Salvador, Falkland Islands, Figi, Finland, France, French Guiana, Germany, Gibraltar, Gilbert & Ellice Islands (Kiribati), Greece, Grenada, Guadeloupe, Hong Kong, Hungary, Israel, Italy, Japan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malawi, Malta, Marshall Islands, Martinique, Mauritius, Mexico, Montserrat, Netherlands, New Hebrides (Vanuatu), Norway, Panama, Portugal, Reunion, Saint Christopher & Nevis, Saint Helena, Saint Lucia, Saint Vincent, San Marino, Seychelles, Slovenia, South Africa, Southern Rhodesia (Zimbabwe), Spain, Suriname, Swaziland, Switzerland, The Isle of Man Jersey, Tonga, Turkey, Turks & Caicos, United Kingdom & Northern Ireland, and the Virgin Islands.
An apostille must be square shaped with sides at least 9 centimeters long. The following is the prescribed form for an apostille:
APOSTILLE
(Convention de La Haye du Oct. 5, 1961)
1. Country: ________________________
This public document
2. has been signed by ________________
3. acting in capacity of _______________
4. bears the seal/stamp of ____________
CERTIFIED
5. at ____________________________
6. the ___________________________
7. by ____________________________
8. No. ___________________________
9. Seal/stamp: _____________________
10. Signature: ______________________
See notice at 1013 TMOG 3 (December 1, 1981).
If a verification is made before a foreign official in a country that is not a member of the Hague Convention, the foreign official's authority must be proved by a certificate of a diplomatic or consular officer of the United States. 15 U.S.C. §1061.
Declarations under 37 C.F.R. §2.20 and 28 U.S.C. §1746 by foreign persons do not have to be made before a U.S. diplomatic or consular officer, or before a foreign official authorized to administer oaths. A declaration under 28 U.S.C. §1746 that is executed outside the United States must allege that "I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct." See
TMEP §804.01(b).
See http://www.state.gov/www/authenticate/index.html for updated information about the Hague Convention.
Under 35 U.S.C. §25, the Office is authorized to accept a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath. These declarations can be used whenever the Act or rules require that a document be verified or under oath.
When the language of 37 C.F.R. §2.20 or 28 U.S.C. §1746 is used with a document, the document is said to have been subscribed to (signed) by a written declaration rather than verified by oath (jurat).
When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that "all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true." Preferably, this language is placed at the end of the document.
In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom. A declaration under 37 C.F.R. §2.20 should read as follows:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
___________________________
(Signature)
___________________________
(Print or Type Name and Position)
___________________________
(Date)
Instead of using the language of 37 C.F.R. §2.20, an applicant may use the language of 28 U.S.C. §1746, which provides as follows:
Wherever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath, or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specific official other than a notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:
(1) If executed outside the United States, its territories, possessions, or commonwealths: "I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).
(Signature)".
(2) If executed within the United States, its territories, possessions, or commonwealths: "I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date).
(Signature)".
NOTE: Title 35 of the United States Code pertains specifically to the United States Patent and Trademark Office and, therefore, is preferred to 28 U.S.C. §1746, which is a statute of general application relating to verification on penalty of perjury.
A declaration that does not attest to an awareness of the penalty for perjury is unacceptable. 35 U.S.C. §25. In re Hoffmann-La Roche Inc., 25 USPQ2d 1539 (Comm'r Pats. 1992), overruled on other grounds 47 USPQ2d 1762, 1763 (1997) (failure to include a statement attesting to an awareness of the penalty for perjury, which is the very essence of an oath, is not a "minor defect" that can be provisionally accepted under 35 U.S.C. §26); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Laboratories Goupil, S.A., 197 USPQ 689 (Comm'r Pats. 1977).
If a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 is not dated, the examining attorney should require the applicant to state the date on which the declaration was signed. This statement does not have to be verified, and may be entered through a note to the file.
See
TMEP §804.02
regarding the essential allegations required to verify an application for registration of a mark.
The requirements for the verified statement in applications under application under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3) and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), 1051(b)(3) and 1126, and 37 C.F.R. §§2.33 and 2.34. These allegations are required regardless of whether the verification is in the form of an oath (
TMEP §804.01(a))
or a declaration (
TMEP §804.01(b)).
See
TMEP §804.06
regarding the requirements for verification of a §66(a) application.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that "to the best of the verifier's knowledge and belief, the facts recited in the application are accurate." The language in 37 C.F.R. §2.20 that "all statements made of [the verifier's] own knowledge are true, and all statements made on information and belief are believed to be true" satisfies this requirement.
Use in Commerce. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the original application, the verified statement must allege that the mark was in use in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. §2.34(a)(1)(i).
Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2) and 1126(e). If the verification is not filed with the original application, the verified statement must allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii).
Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1).
In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant to be entitled to use the mark in commerce and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. See 15 U.S.C. §1051(b)(3)(A); 37 C.F.R. §2.33(b)(2).
While the correct language for an application filed under §1(b) or §44 is "entitled to use," if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the Office will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.
Concurrent Use. The verification for concurrent use should be modified to indicate an exception, that no one else except as specified in the application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See
TMEP §§1207.04
et seq. regarding concurrent use registration.
Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See
TMEP §§1201.03
et seq. regarding use by related companies.
Affirmative, Unequivocal Averments Required
The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements to the effect that "the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce..." are unacceptable.
Substitute Verification
If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
Papers Must Be Filed Within a Reasonable Time After Execution
All applications and papers must be filed within a reasonable time after their execution. Under 37 C.F.R. §2.33(c), if the verified statement supporting an application for registration is not filed within a reasonable time after it is signed, the Office will require the applicant to submit a substitute affidavit or declaration under 37 C.F.R. §2.20 of the applicant's continued use or bona fide intention to use the mark in commerce. Re-execution is also required where allegations of use and requests for extensions of time to file a statement of use are not filed within a reasonable time after the date of execution. 37 C.F.R. §§2.76(i), 2.88(k), and 2.89(h);
TMEP §§1104.09(b)
,
1108.02(b)
and
1109.11(c).
The Office considers one year between execution and filing as reasonable for all applicants and all papers. No new verification should be required if the paper is filed within one year of execution. If an application, allegation of use, or request for extension of time to file a statement of use is filed more than one year after its execution, the examining attorney will require that the applicant submit re-executed papers or a statement that is verified or includes a declaration under 37 C.F.R. §2.20, of the applicant's continued use or bona fide intent to use the mark in commerce, as appropriate.
Papers Cannot Be Filed Before They Are Executed
If an applicant files an application that is signed and lists a date of execution that is subsequent to the application filing date, the examining attorney will inquire as to the actual date on which the application was signed. However, where an application is executed in a foreign country located across the international date line, the fact that an application shows a date of execution as of the day after the application filing date is not inconsistent with its having been executed before filing. No inquiry is required in this limited situation.
Extract from 37 C.F.R. §2.33(a). The application must include a statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant. A person who is properly authorized to sign on behalf of the applicant is:
(1) 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 as defined in §10.1(c) of this chapter who has an actual or implied written or verbal power of attorney from the applicant.
Effective October 30, 1999, the Trademark Act does not specify the appropriate person to verify facts on behalf of an applicant. The definition of a "person properly authorized to sign on behalf of an applicant" is set forth in 37 C.F.R. §2.33(a). This definition applies to applications for registration, amendments to allege use, statements of use, requests for extensions of time to file statements of use, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits of incontestability under 15 U.S.C. §1065; and combined filings under 15 U.S.C. §§1058 and 1059. 37 C.F.R. §§2.76(b)(1), 2.88(b)(1), 2.89(b)(3), and 2.161(b). It also applies to declarations supporting amendments to dates of use, use of substitute specimens, claims of acquired distinctiveness under 15 U.S.C. §1052(f), amendments changing the basis for filing, requests for amendment or correction of registrations under 15 U.S.C. §1057, and designations of domestic representative.
Generally, the Office does not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory's authority to sign. The Office presumes that papers are properly signed. In view of the broad definition of a "person properly authorized to sign on behalf of an applicant" in 37 C.F.R. §2.33(a), the fact that an application is signed by someone whose title refers to a different entity is not considered an inconsistency that warrants an inquiry as to whether the verification was properly signed.
Example: If an application is filed by "ABC Company, Inc.," and the verification is signed by an officer of "XYZ Company, Inc.," the Office will presume that XYZ Company, Inc. is a related company properly authorized to sign on behalf of ABC Company, Inc. The Office will not ask the applicant to explain how the person has authority to sign.
It is not necessary to set forth the title of the person signing the verification or to state the relationship between the applicant and the person who signed the verification.
If the person signing the verification is identified as a different person than the individual named as the applicant, or as representing a different legal entity than the juristic applicant, the Office will not question whether the proper party is listed as the applicant.
Example: If the applicant is Mary Smith, an individual, and the application is signed by John Smith, the Office will not question whether the proper party is listed as applicant.
Example: If the applicant is John Smith, an individual, and the application is signed by John Smith, President, XYZ, Inc., the Office will not question whether the proper party is listed as applicant.
If an attorney signs a verification on behalf of an applicant, the Office will not require a power of attorney or other documentation stating that the attorney is authorized to sign.
This policy applies to both individual applicants and juristic applicants.
The broad definition of a "person properly authorized to sign on behalf of an applicant" in 37 C.F.R. §2.33(a) applies only to verifications of facts by the applicant and designations of domestic representatives. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, or consent agreements.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a) is not necessarily entitled to sign responses to Office actions, or to authorize examiner's amendments and priority actions. Authorizing an amendment to an application, or submitting legal arguments in response to an examining attorney's requirement or refusal of registration, constitutes representation of the applicant in a trademark matter. Under 5 U.S.C. §500(d) and 37 C.F.R. §10.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See
TMEP §§712
et seq. regarding signature of responses to Office actions.
In applications under §66(a) of the Act, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes a properly signed declaration before it sends the request for extension of protection to the USPTO. The examining attorney should not issue any inquiry regarding the authority of the signatory to verify the application. If the applicant needs to file a request for correction of the declaration, the request should be filed 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.
In a document filed through TEAS or the Electronic System for Trademark Trials and Appeals ("ESTTA"), the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:
(1) The filer enters a "symbol" that the filer has adopted as a signature. The USPTO will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash ("/") symbols. 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii). Examples of acceptable signatures include /john doe/, /drl/, and /544-4925/; or
(2) The document is completed online, printed in text form, and given or sent to the signatory. The signatory signs the document in the traditional pen-and-ink manner. An image file of the signed document is then transmitted electronically through TEAS or ESTTA. This method of signature is used primarily by attorneys who complete a document online, print it, and mail or fax it to the client for signature in text form. The client signs the document and returns it to the attorney. The attorney scans the returned document to create a .jpg image file, and files the document through TEAS or ESTTA with the .jpg attachment.
These principles apply to the signature of all documents filed electronically, e.g., amendments to allege use, statements of use, requests for extension of time to file a statement of use, responses to Office action, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits or declarations of incontestability under 15 U.S.C. §1065; combined filings under 15 U.S.C. §§1058 and 1059, petitions for cancellation under 15 U.S.C. §1064, notices of opposition and requests for extensions of time to oppose under 15 U.S.C. §1063.
The Trademark Trial and Appeal Board has held that an electronic signature on an electronic transmission pertains to all the attachments to the transmission. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926(TTAB 2005).
If the signatory's name is not set forth in a TEAS document, the examining attorney should require that it be stated for the record. The examining attorney can enter this information through a note to the file.
See
TMEP §301
for more information about electronic filing.
In applications under §66(a) of the Act, the request for extension of protection to the United States must 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 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 as defined in 37 C.F.R. §10.1 who is authorized to practice before the USPTO 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).
The verified statement in a §66(a) application is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should not issue any inquiry regarding the verification of the application. If the applicant needs to file a request for correction of the declaration, the request should be filed 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.
An application must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 37 C.F.R. §2.32(a)(6). See
TMEP §§1402
et seq. for more information about identifying goods and services in an application.
The applicant should designate the international class number(s) that are appropriate for the identified goods or services, if this information is known. 37 C.F.R. §2.32(a)(7). See
TMEP §§1401
et seq. for more information about classification.
A filing basis is the statutory basis for filing an application to obtain registration of a mark in the United States. An applicant must specify and meet the requirements of one or more filing bases before the mark will be approved for publication for opposition or registration on the Supplemental Register. 37 C.F.R. §2.32(a)(5). There are five filing bases: (1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a); (2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b); (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126(d); (4) ownership of a registration for the mark in the applicant's country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and (5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a). 37 C.F.R. §2.34.
An applicant is not required to specify the basis for filing to receive a filing date. If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.
In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.
See 37 C.F.R. §2.34 and
TMEP §§806.01
et seq. for a list of the requirements for each basis.
The requirements for establishing a basis are set forth in
TMEP §§806.01(a)
through 806.01(e). If these requirements are not met in the original application, the examining attorney will require the applicant to comply with them in the first Office action.
Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:
(1) Submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1051(a)(3)(C). If this verified statement is not filed with the initial application, the verified statement must also state that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date (37 C.F.R. §2.34(a)(1)(i));
(2) Specify the date of the applicant's first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.34(a)(1)(ii);
TMEP §903.01)
;
(3) Specify the date of the applicant's first use of the mark in commerce as a trademark or service mark (37 C.F.R. §2.34(a)(1)(iii);
TMEP §903.02)
; and
(4) Submit one specimen for each class, showing how the applicant actually uses the mark in commerce (37 C.F.R. §§2.34(a)(1)(iv) and 2.56;
TMEP §§904
et seq.).
The Trademark Act defines "commerce" as commerce which may lawfully be regulated by Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; 37 C.F.R. §2.34(c). See
TMEP §§901
et seq.
An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services. 37 C.F.R. §2.34(b)(1);
TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. 37 C.F.R. §2.34(a)(1)(i). Cf. E.I. du Pont de Nemours & Co. v. Sunlyra International, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the Office may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed.
TMEP §806.02(c).
In an application based on 15 U.S.C. §1051(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1051(b)(3)(B). If the verified statement is not filed with the initial application, the verified statement must also state that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services as of the filing date of the application. 37 C.F.R. §2.34(a)(2).
Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) that states that the applicant is using the mark in commerce on or in connection with the goods or services; includes dates of use and a filing fee for each class; and includes one specimen evidencing such use for each class. See 37 C.F.R. §2.76 and
TMEP §§1104
and
37
C.F.R. §2.88 and
TMEP §§1109
et seq. regarding statements of use.
Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).
See
TMEP Chapter 1100
for additional information about intent-to-use applications.
Under 15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date based on a previously-filed foreign application are:
(1) The applicant must file a claim of priority within six months of the filing date of the foreign application. 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5).
(2) The applicant must: (a) specify the filing date, serial number 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. §§2.34(a)(4)(i)(A) and (B).
(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1126(d)(2). This allegation is required even if use in commerce is asserted in the application.
TMEP §806.02(e).
If the verified statement is not filed with the initial application, the verified statement must also state that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application. 37 C.F.R. §2.34(a)(4)(ii).
The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.32(a)(6);
TMEP §1402.01(b).
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.34(a)(4)(iii);
TMEP §1003.03.
If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) before the mark can be registered. See
TMEP §806.01(b)
regarding the requirements for a §1(b) basis.
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §§2.35(b)(3) and (4). See
TMEP §806.04(b)
regarding processing an amendment electing not to perfect a §44(e) basis, and
TMEP §806.02(f)
regarding the examination of applications that claim §44(d) in addition to another basis.
See
TMEP §§1003
et seq. for further information about §44(d) applications.
Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant's country of origin, are:
(1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant's country of origin. 37 C.F.R. §2.34(a)(3)(ii);
TMEP §§1004.01
and
1004.01(b).
(2) The application must include the applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the identified goods or services. 15 U.S.C. §1126(e). This allegation is required even if use in commerce is asserted in the application.
TMEP §806.02(e).
If the verified statement is not filed with the initial application, the verified statement must also state that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(3)(i).
(3) The applicant's country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law. See
TMEP §§1002
et seq.
The scope of the goods covered by the §44 basis in the United States application cannot exceed the scope of the goods or services in the foreign registration. 37 C.F.R. §2.32(a)(6);
TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is considered a change in basis.
TMEP §1004.02.
See
TMEP §§806.03
et seq. regarding amendments to add or substitute a basis.
See
TMEP §1004
et seq. for further information about §44(e) applications.
Section 66(a) of the Act provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.34(a)(5). The request must include a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration. The verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application. 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 §804.06.
A §66(a) applicant cannot change the basis or claim more than one basis. 37 C.F.R. §§2.34(b)(3) and 2.35(a). See
TMEP §1904.09
regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.
Under 15 U.S.C. §1141g and Madrid Protocol Article 4(2), the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
(1) The request for extension of protection contains a claim of priority;
(2) The request for extension of protection specifies the filing date, serial number and the country of the application that forms the basis for the claim of priority; and
(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).
In a §66(a) application, the applicant cannot claim more than one basis. 37 C.F.R. §2.34(b)(3).
In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b)(1). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods or services to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated. 37 C.F.R. §§2.34(b)(2) and 2.35(b)(6).
Example: Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.
The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.
The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services. However, the applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services. 37 C.F.R. §2.34(b)(1).
An applicant may rely on both §1(a) and §1(b) in a single application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in a single application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services. This can occur in either a single or multi-class application. 37 C.F.R. §2.34(b)(1).
When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the Office will publish the mark for opposition and will issue a notice of allowance (see
TMEP §§1106
et seq.) if there is no successful opposition. The goods/services for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods based on §1(b), unless the applicant files a request to divide. See
TMEP §§1110
et seq. regarding requests to divide. If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use.
TMEP §806.02(d).
If the applicant claims use in commerce in addition to another basis but does not specify which goods/services are covered by which basis, the Office may defer examination of the specimens until the applicant identifies the goods/services for which use is claimed. A proper examination of specimens requires consideration of the particular goods/services on or in connection with which the mark is used.
If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multi-basis application, the failure to respond will result in abandonment of the entire application, unless the applicant files a request to divide under 37 C.F.R. §2.87 and notifies the examining attorney that the request has been filed. See
TMEP §§1110
et seq. regarding requests to divide. If the failure to respond was unintentional, the applicant may file a petition to revive. See
TMEP §§1714
et seq. regarding petitions to revive.
Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing basis. Cf. In re Paul Wurth, S.A., 21 USPQ2d 1631 (Comm'r Pats. 1991).
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.
If an applicant properly claims a §44(d) basis in addition to a §1 basis, the applicant may elect not to perfect a §44(e) basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4).
If an applicant claims §44(d) in addition to another basis, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the application on which the applicant relied for priority). The examining attorney should advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and ask the applicant whether it wishes to perfect the §44(e) basis. This inquiry should be made in the first Office action, or by telephone if no Office action is issued. If the examining attorney is unable to reach the applicant by telephone, the examining attorney should issue an Office action requiring a copy of the foreign registration, advising applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquiring as to whether the applicant wishes to retain §44(e) as a second basis for registration.
If the applicant does not intend to assert a dual basis for registration, this should be indicated in an examiner's amendment and the mark should be approved for publication or issuance of a registration on the Supplemental Register, if appropriate. See
TMEP §806.04(b)
regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis.
If the applicant wishes to perfect the §44 basis, the examining attorney cannot approve the mark for publication for opposition or registration on the Supplemental Register until the applicant files a copy of the foreign registration. Therefore, if all issues are resolved or in condition for final action, the examining attorney must suspend action pending receipt of the foreign certificate.
TMEP §1003.04.
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce. Therefore, when an applicant adds or substitutes §1(b) or §44 as a filing basis, it is not necessary to submit a new verification of the applicant's bona fide intention to use the mark in commerce if there is already one in the record with respect to the goods or services covered by the new basis.
Section 1 or §44 Application - Before Publication: The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(b)(1).
Section 1 or §44 Application - After Publication: In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must first petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2). See
TMEP §§806.03(j)
et seq. for further information. Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a). See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §514.
Section 66(a) Application: In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a);
TMEP §806.03(k).
An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See
TMEP §806.02(f)
regarding §44(d) combined with another basis.
If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3).
When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).
See
TMEP §806.03(j)
regarding amendment of the basis after publication.
Once an applicant has filed a statement of use in a §1(b) application, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g);
TMEP §1109.17.
An applicant may amend the basis from §44 to §1(b). The USPTO will presume that the applicant had a continuing valid basis, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3). It is not necessary to submit a new verification of the applicant's bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See
TMEP §806.03(i).
Applicant must clearly indicate whether it wants to (1) add the §1(b) basis and maintain the §44 basis, or (2) replace the §44 basis with the §1(b) basis.
In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4);
TMEP §806.03(h).
If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney cannot approve the mark for publication until the applicant files a copy of the foreign registration. See
TMEP §806.02(f).
See
TMEP §806.03(j)
regarding amendment of the basis after publication.
An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Trademark Act. 37 C.F.R. §2.35(b)(8). See
TMEP §§1103
,
1104
and
1109
et seq. regarding allegations of use.
An applicant can add or substitute a basis only if the applicant meets all the requirements for the new basis. 37 C.F.R. §2.35(b)(1). Therefore, an applicant may not amend a §44 application to claim a §1(a) basis unless the applicant (1) verifies that the mark has been in use in commerce since the application filing date; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(i), 2.34(a)(1)(ii), 2.34(a)(1)(iii), and 2.59(a); 2.71(c)(1);
TMEP §§806.01(a)
,
806.03(i)
,
903.01
,
903.02
,
903.05
and
904.09.
If an applicant began using the mark in commerce after the application filing date, the applicant cannot add or substitute §1(a) as a basis. However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use. See
TMEP §806.03(d)
regarding amendment of the basis from §44 to §1(b), and
TMEP §§1104
et seq. regarding amendments to allege use.
An applicant may amend the basis from §1(b) to §44. It is not necessary to submit a new verification of the applicant's bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See
TMEP §806.03(i).
When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and a translation, if necessary) with the amendment. 37 C.F.R. §2.34(a)(3)(ii);
TMEP §§1004.01
and
1004.01(b).
The applicant may add §44(d) as a basis only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See
TMEP §806.02(f)
regarding §44(d) combined with another basis.
If the amendment is filed before publication, the applicant must clearly indicate whether it wants to (1) add the §44 basis and maintain the §1(b) basis, or (2) replace the §1(b) basis with the §44 basis. If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis. See
TMEP §§806.03(j)
et seq. regarding amendment of the basis after publication.
When the applicant substitutes one basis for another, the applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for registration since the application filing date. Unless there is contradictory evidence in the record, the Office will presume that there was a continuing valid basis for registration. 37 C.F.R. §2.35(b)(3).
If the applicant properly asserts a §44(d) basis during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is established, provided that the applicant has had a continuing valid basis for registration. 37 C.F.R. §2.35(b)(3) and (4);
TMEP §806.02(f).
If there is no continuing valid basis, the application is void, and registration will be refused. In this situation, the applicant cannot amend the filing date, and the Office will not refund the filing fee. See
TMEP §205.
An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark has been in use in commerce on or in connection with the goods/services covered by the §1(a) basis since the filing date of the application. 37 C.F.R. §2.34(a)(1)(i).
An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application since the filing date of the application, unless a verified statement of the applicant's bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii).
Example: If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.
See
TMEP §804.04
regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.33(a).
In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).
When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued. See
TMEP §806.03(j)(ii)
regarding amendment of the basis after issuance of a notice of allowance.)
If the examining attorney accepts the new basis, the mark must be republished. 37 C.F.R. §2.35(b)(2).
If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed. See
TMEP §806.03(j)(ii)
regarding amendments to the basis after i
