T.M.E.P. § 1201.02
Identifying the Applicant in the Application
Executive summary:
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1201.02 Identifying the Applicant in the Application
1201.02(a) Identifying the Applicant Properly
The applicant may be any person or entity capable of suing andbeing sued in a court of law. See TMEP §§803 et seq. for the appropriate format for identifying the applicant and setting forth the relevant legal entity. See TMEP §1201.03(a) regarding the form for indicating that the mark is used solely by a related company.
1201.02(b) Application Void if Wrong Party Identified as the Applicant
An application must be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. See TMEP §1201.
An application based on use in commerce under 15 U.S.C. 1051(a) must be filed by the party who owns the mark on the application filing date. If the applicant does not own the mark on the application filing date, the application is void. 37 C.F.R. 2.71(d). Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988).
If the record indicates that the applicant is not the owner of the mark, the examining attorney should refuse registration on that ground. The statutory basis for this refusal is §1 of the Trademark Act, 15 U.S.C. 1051, and, where related company issues are relevant, §§5 and 45, 15 U.S.C. §§1055 and 1127. The examining attorney should not have the filing date cancelled or refund the application filing fee.
In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C. 1051(b) or §1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(3)(A), 1051(b)(3)(B), 1126(d)(2) and 1126(e). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff'd, 232 F.3d 907 (Fed. Cir. 2000) (intent-to-use application filed by an individual held void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband). However, the examining attorney will not inquire into the bona fides, or good faith, of an applicant's asserted intention to use a mark in commerce during ex parte examination, unless there is evidence in the record clearly indicating that the applicant does not have a bona fide intention to use the mark in commerce. See TMEP §1101.
When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. 37 C.F.R. 2.71(d); TMEP§803.06. However, if the application was filed by the owner, but there was a mistake in the manner in which the applicant's name is set forth in the application, this may be corrected. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
See TMEP §1201 regarding ownership of a §66(a) application.
1201.02(c) Correcting Errors in How the Applicant Is Identified
If the party applying to register the mark is in fact the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendment. U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613 (Comm'r Pats. 1974). However, the application may not be amended to designate another entity as the applicant. 37 C.F.R. 2.71(d); TMEP§803.06. An application filed in the name of the wrong party is void andcannot be corrected by amendment. In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).
The following are examples of correctable errors in identifying the applicant:
(1) If the applicant identifies itself by a name under which it does business, which is not its name as a legal entity, then amendment to state the applicant's correct legal name is permitted.
(2) If the applicant mistakenly names an operating division that is not a legal entity as the owner, then the applicant's name may be amended. See TMEP §1201.02(d).
(3) Clerical errors such as the mistaken addition or omission of "The" or "Inc." in the applicant's name may be corrected by amendment.
(4) If the record is ambiguous as to who owns the mark, e.g., an individual and a corporation are each identified as the owner in different places in the application, the application may be amended to indicate the proper applicant.
(5) If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected because the correct party filed, but merely identified itself incorrectly. In re Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982).
(6) If an applicant has been identified as "A and B, doing business as The AB Company, a partnership," and the true owner is a partnership organized under the name The AB Company and composed of A and B, the applicant's name should be amended to "The AB Company, a partnership composed of A and B."
(7) If an applicant has been identified as "ABC Corporation, formerly known as XYZ, Inc.," and the correct entity is "XYZ, Inc.," the applicant's name may be amended to "XYZ, Inc.," as long as "ABC Corporation, formerly known as XYZ, Inc." was not a different existing legal entity. Cf. Custom Computer Services Inc. v. Paychex Properties Inc., 337 F.3d 1334, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003).
To correct an obvious mistake of this nature, a verification or declaration is not normally necessary.
The following are examples of non-correctable errors in identifying the applicant:
(1) If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, the application is void as filed because the applicant is not the owner of the mark.
(2) If an application is filed in the name of entity A, when the mark was assigned to entity B before the application filing date, the application is void as filed because the applicant was not the owner of the mark at the time of filing. Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (application filed by an individual two days after ownership of the mark was transferred to a newly formed corporation held void).
(3) If the application is filed in the name of a joint venturer when the mark is owned by the joint venture, the applicant's name cannot be amended. In re Tong Yang Cement Corp., supra.
(4) If an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark, the application is void as filed because the applicant is not the owner of the mark.
1201.02(d) Operating Divisions
An operating division that is not a legal entity that can sue andbe sued does not have standing to own a mark or to file an application to register a mark. The application must be filed in the name of the company of which the division is a part. In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986). An operating division's use is considered to be use by the applicant and not use by a related company; therefore, reference to related-company use is permissible but not necessary.
1201.02(e) Changes in Ownership After Application Is Filed
See TMEP §Chapter 500 regarding changes of ownership andchanges of name subsequent to filing an application for registration, and TMEP§§502.02 et seq. regarding the procedure for requesting that a certificate of registration be issued in the name of an assignee or in an applicant's new name.