T.M.E.P. § 812
Identification of Prior Registrations of Applicant

Executive summary:

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812 Identification of Prior Registrations of Applicant

37 C.F.R. 2.36. Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application.

Trademark Rule 2.36, 37 C.F.R. 2.36, states that prior registrations of the same or similar marks owned by the applicant should be identified in the application. The rule does not precisely define when an applicant should claim ownership of prior registration(s), and the examining attorney may exercise discretion in invoking the rule. The main purpose of the rule is to provide the examining attorney with information necessary for proper examination. The information does not have to be given in any specific form. The applicant's claim of ownership of prior registrations will be printed in the Official Gazette and on the registration certificate.

Normally, identification of a registration is necessary because the registration would, if not owned by the applicant, be a basis for refusal under §2(d) of the Act, 15 U.S.C. 1052(d). Occasionally it is desirable to ask an applicant to identify a particular registration as being owned by the applicant merely to provide relevant information.

It is not necessary to assert ownership of expired or cancelled registrations. If the applicant wants to include a reference to a cancelled or expired registration, the applicant should indicate that the applicant owns the mark disclosed in the cancelled or expired registration, because technically one does not "own" a registration that is not in force and effect. Claims of ownership of pending applications, expired or cancelled registrations, and registrations that are unrelated to an application will not be printed.

Before approving an application that includes a claim of ownership of prior registrations for publication or registration, the examining attorney must ensure that the registrations are active.

All information in the prior registration field in the application record in the TRAM database will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, when an examining attorney determines that a claim of ownership of a prior registration should not be printed (e.g., because the registration is no longer active or is irrelevant to the registrability of the mark in the subject application), the examining attorney should ensure that the claim of ownership is deleted from the TRAM database, and enter a note to the file indicating that the claim has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.

If the applicant owns numerous prior registrations, it is not necessary to list them all. The applicant should identify the two or three registration numbers that are most relevant (due to the similarity of the marks and/or relatedness of the goods or services), e.g., "the applicant is the owner of Reg. Nos. _____________ and others."