T.M.E.P. § 1109.10
Ownership

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1109.10 Ownership

The party filing the statement of use must be the owner of the mark at the time the statement is filed. If the party filing the statement of use is the owner at the time of filing but the records of the Office show title in another party, the examining attorney must require the applicant to submit evidence to establish chain of title. If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership can be provided after expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71 and 3.73; TMEP §502.01. To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Division, and include a statement that the document has been recorded in the response to the Office action; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. 2.20, that a valid transfer of legal title occurred prior to filing the statement of use. 37 C.F.R. 3.73(b)(1); TMEP §502.01. The applicant must submit the evidence within the response period specified in the examining attorney's Office action.

If the party who filed the statement of use was not the owner of the mark at the time of filing, the true owner may not file a substitute statement of use unless there is time remaining in the statutory filing period. In re Colombo Inc., 33 USPQ2d 1530 (Comm'r Pats. 1994). See TMEP §1108.03 regarding the filing of an "insurance" request for extension of time to file a statement of use in order to gain additional time to file a proper statement of use.

Therefore, if the party filing the statement of use is not the owner of the mark at the time the statement of use is filed, the examining attorney cannot accept the statement of use. If no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration because no acceptable statement of use was filed within the time permitted, and hold the application abandoned. A regular Office action refusing registration should be issued, with a six-month response period. See TMEP §1109.16(b). The applicant cannot file a petition to revive under 37 C.F.R. 2.66 in this situation. TMEP §1714.01(f)(ii).

See 37 C.F.R. 3.85 and TMEP §502.02(a) regarding the issuance of registration certificate in the name of a new owner, and TMEP §502.02(c) regarding an examining attorney's handling of an application after the mark has been assigned.