803.03 Legal Entity of Applicant
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.
803.03(a) Individual or Sole Proprietorship
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.
803.03(b) Partnership, Joint Venture or Other "Firm"
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.
803.03(c) Corporation and Association
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.
803.03(d) Joint Applicants
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.
803.03(e) Trusts, Conservatorships and Estates
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.
803.03(e)(i) Business Trusts
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.
803.03(f) Governmental Bodies and Universities
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.
803.03(g) Banking Institutions
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.
803.03(h) Limited Liability Companies
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.
803.03(i) Common Terms Designating Entity of Foreign Applicants
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.
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.
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).
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.
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.
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."
803.03(j) Federally Recognized Indian TribeA federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant's entity.