TMEP 1104.10(b)(i): Ownership

This is the October 2015 Edition of the TMEP

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1104.10(b)(i)    Ownership

The examining attorney must confirm that the proper party has filed the amendment to allege use. Only the applicant or a valid assignee under §10 of the Trademark Act, 15 U.S.C. §1060, may file an amendment to allege use. If USPTO records show title in a party other than the party filing the amendment to allege use, the examining attorney must refuse registration on the ground that the amendment to allege was not filed by the owner of record. See 37 C.F.R. §2.76(b)(1)(i). In such cases, the examining attorney must withhold acceptance of the amendment to allege use until the party who filed the amendment to allege use establishes ownership. If the party filing the amendment to allege use was not the owner of the mark at the time of filing, the true owner may file a substitute amendment to allege use (including the filing fee for each class) on or before the date the application is approved for publication.

If the party filing the amendment to allege use was the owner at the time of filing, the party may submit evidence to establish chain of title within the response period specified in the Office action. See 37 C.F.R. §§3.71(d), 3.73(b). To establish ownership, the party who filed the amendment to allege use must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1). See TMEP §502.01 regarding establishing the right to take action in an application or registration.

If an amendment to allege use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is identified, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in how the applicant is identified.

See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of the new owner, and TMEP §502.02(c) regarding an examining attorney’s handling of an application after the mark has been assigned.