TMEP 1108.02(a): Ownership

This is the October 2015 Edition of the TMEP

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1108.02(a)    Ownership

The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use or exercise legitimate control over the use of the mark, at the time of filing. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), 2.89(b)(3). If the party filing the extension request is not the owner of record, the request should include either a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Recordation Branch of the USPTO, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71(d) and 3.73(b). (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)

If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the ITU staff will issue an Office action denying the request. If the party who filed the extension request was the owner at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period, within the time provided in the Office action advising the applicant of the denial.

To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and state 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, supported by 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); TMEP §502.01. The USPTO recommends that requests to record documents with the Assignment Recordation Branch be filed through Electronic Trademark Assignment System (“ETAS”) at http://etas.uspto.gov.

If an extension request is filed by the owner, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory period for filing the extension request. Cf. In re Colombo Inc., 33 USPQ2d 1530, 1531 (Comm’r Pats. 1994) (indicating that a statement of use filed by the wrong party cannot be corrected with a properly signed verification unless it is submitted within the statutory period for filing the statement of use). See TMEP §1108.05 for applicant's recourse if an extension request is denied.

If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that an assignment or other document of title has been recorded, and there is a clear chain of title, the ITU staff will update the owner of record in the Trademark database. See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §504 regarding the circumstances in which the “Ownership” field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.