T.M.E.P. § 812.01
Proving Ownership of Prior Registrations
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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812.01 Proving Ownership of Prior Registrations
If an applicant includes a claim of ownership of a prior registration in the application as filed, the examining attorney should accept the claim without further proof of ownership and should not cite the registration as a reference under §2(d) of the Act.
If the applicant does not assert ownership of a pertinent registration in the application when it is filed, but the records of the USPTO indicate that the registration is owned by the applicant, the examining attorney does not have to cite the registration as a reference, but should call the registration to the applicant's attention and ask the applicant to state that the applicant owns the registration, if accurate. This statement may be placed in the record through an examiner's amendment.
The examining attorney should check the automated records of the Assignment Services Division of the Office to determine whether information contained in those records supports ownership of the registration in the applicant's name.
Generally, the applicant has the burden of proving ownership of a registration. The USPTO's automated search system may not reflect the recordation of changes of ownership in the Assignment Services Division. Therefore, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, it is possible that the registration may be cited as a reference under §2(d) even though it is owned by the applicant. If so, the applicant must: (1) state for the record that the documents have been recorded in the Assignment Services Division for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a registered extension of protection of an international registration under §69 of the Trademark Act; (2) submit copies of documents evidencing the chain of title; or (3) submit an explanation, supported by an affidavit or declaration under 37 C.F.R. 2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates). See TMEP §§502 et seq.