T.M.E.P. § 1604.07
Ownership, and Who May File ¤8 Affidavit

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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1604.07 Ownership, and Who May File §8 Affidavit

1604.07(a) Affidavit or Declaration Must be Filed by Owner

The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration. Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. 2.164(b).

If it is unclear whether the party who filed the affidavit is the present owner, the Post Registration examiner will issue an Office action requiring the party to establish its ownership. If the party who filed the affidavit was the owner of the registration at the time of filing, the owner may file evidence to establish ownership even if the filing period set forth in §8 of the Act has expired. There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. See TMEP §1604.07(b).

If the affidavit or declaration was filed in the name of the wrong party, and there is time remaining in the filing period or grace period, the true owner must file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. 2.6, and, if applicable, a specimen of use for each class. If the new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration.

If the affidavit or declaration was filed in the name of the wrong party, and there is no time remaining in the grace period, the registration will be cancelled. 15 U.S.C. 1058; 37 C.F.R. 2.164(b). Filing in the name of another entity is not a deficiency that can be corrected after the expiration of the grace period. See In re Precious Diamonds, Inc., 635 F.2d 845, 208 USPQ 410 (C.C.P.A. 1980); In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications, Inc., 62 USPQ2d 1049 (Dir USPTO 2001); In re Caldon Company Limited Partnership, 37 USPQ2d 1539 (Comm'r Pats. 1995); In re Weider, 212 USPQ 947 (Comm'r Pats. 1981). See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.

1604.07(b) Establishing Ownership

When the affidavit is filed by someone other than the original owner of the registration, the examiner cannot accept the affidavit unless there is a clear chain of title from the original owner to the party who filed the affidavit. 37 C.F.R. 3.73(b); TMEP §502.01.

When the affidavit is filed, the examiner will check the records of the Assignment Services Division of the USPTO, available at http://assignments.uspto.gov/assignments. If the records of the Assignment Services Division show a clear chain of title in the party who filed the affidavit, no inquiry will be issued. The examiner will enter the change of ownership into the Trademark Reporting and Monitoring ("TRAM") System, if necessary.

If the records of the Assignment Services Division do not show a clear chain of title in the party who filed the affidavit, the examiner will issue an Office action requiring the party to establish its ownership of the registration. To establish ownership, the party must: (1) record papers that show each change of ownership in the Assignment Services Division of the USPTO, and include a statement in the response to the Office action that the papers have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit. 37 C.F.R. 3.73(b)(1); TMEP §502.01.

"Documentary evidence of a chain of title from the original owner to the assignee" (37 C.F.R. 3.73(b)(1)(i)) normally consists of the same type of documents that would be recorded in the Assignment Services Division, e.g., assignment documents, certificates of merger, or certificates of change of name. In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.

The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired. Where the party who filed the affidavit was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.

1604.07(c) Acceptance Notice Issued in Name of Owner of Record

The notification of acceptance of a §8 affidavit is issued in the name of the owner of record, as shown in the automated records of the Trademark Operation (i.e., the TRAM System, Trademark Applications and Registrations Retrieval ("TARR") database, X-Search and Trademark Electronic Search System ("TESS").

When a party other than the original owner files a §8 affidavit, the USPTO will accept the affidavit if the new owner submits documentary evidence of the chain of title (see TMEP §1604.07(b)) , even if the new owner does not record the documents of ownership in the Assignment Services Division. 37 C.F.R. 3.73. However, the USPTO will not issue the notice of acceptance of the §8 affidavit in the name of the new owner unless the new owner (1) records the appropriate document in the Assignment Services Division; and (2) notifies the Post Registration examiner that the document has been recorded. 37 C.F.R. 3.85. See TMEP §§504 et seq. regarding the circumstances in which the ownership field in the trademark database will be automatically updated after recordation of a document with the Assignment Services Division, even if the new owner does not notify the Trademark Operation that the document has been recorded.

See TMEP §502.01 regarding establishing ownership of a registration, and TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.

1604.07(d) Changes of Legal Entity

The procedures for establishing ownership, as discussed in TMEP §1604.07(b) , also apply to changes of name and changes of legal entity. See TMEP §1604.07(e) regarding changes of name.

A change in the state of incorporation is a change of legal entity, creating a new party.

The death of a partner, or other change in the membership of a partnership, creates a change in legal entity, unless the partnership agreement provides for continuation of the partnership and the relevant state law permits this.

A merger of companies into a new company normally constitutes a change of legal entity.

Affidavits may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person's authority to act on behalf of the present owner. If there is a court order, a copy of the order should be submitted.

1604.07(e) Changes of Name

A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership if there is clear title in the party who filed the §8 affidavit. Therefore, if the owner records a change of name with the Assignment Services Division and subsequently files the §8 affidavit in its former name, the examiner will not issue an inquiry regarding ownership.

However, if it is unclear from the records of the Assignment Services Division whether the party who filed the affidavit is the owner of record, the owner must either record evidence of the change of name in the Assignment Services Division or submit proof of the change of name, as discussed in TMEP §1604.07(b). For a corporation, this is done by recording or submitting a certificate of change of name issued by the Secretary of State (or other authorized body) of the state of incorporation.

See TMEP §1604.07(c) regarding issuance of the notice of acceptance of the affidavit in the name of the new owner.

1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner

If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out in the affidavit, the mistake can be corrected. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats. 1990). No deficiency surcharge is required in this situation.

However, if the affidavit or declaration was mistakenly filed in the name of a person or legal entity who did not own the mark as of the filing date, a new affidavit or declaration cannot be filed in the name of the true owner unless there is time remaining in the grace period. See TMEP §1604.07(a). In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications, Inc., 62 USPQ2d 1049 (Dir USPTO 2001).

See TMEP §1201.02(c) for examples of correctable and non-correctable errors.