TMEP 1201: Ownership of Mark

This is the October 2015 Edition of the TMEP

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1201    Ownership of Mark

Under §1(a)(1) of the Trademark Act, 15 U.S.C. §1051(a)(1), a trademark or service mark application based on use in commerce must be filed by the owner of the mark. A §1(a) application must include a verified statement that the applicant believes the applicant is the owner of the mark sought to be registered. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1). An application that is not filed by the owner is void. See TMEP §1201.02(b).

A trademark or service mark application under §1(b) or §44 of the Act, 15 U.S.C. §§1051(b), 1126, must be filed by a party who is entitled to use the mark in commerce, and must include a verified statement that the applicant is entitled to use the mark in commerce and that the applicant has a bona fide intention to use the mark in commerce as of the application filing date. 15 U.S.C. §§1051(b)(3)(A)-(B), 1126(d)(2), 1126(e); 37 C.F.R. §2.33(b)(2). When the person designated as the applicant is not the person with a bona fide intention to use the mark in commerce, the application is void. See TMEP §1201.02(b).

In a §1(b) application, before the mark can be registered, the applicant must file an amendment to allege use under 15 U.S.C. §1051(c) (see TMEP §§1104-1104.11) or a statement of use under 15 U.S.C. §1051(d) (see TMEP §§1109-1109.18) which states that the applicant is the owner of the mark. 15 U.S.C. §1051(b); 37 C.F.R. §§2.76(b)(1)(i), 2.88(b)(1)(i).

In a §44 application, the applicant must be the owner of the foreign application or registration on which the U.S. application is based as of the filing date of the U.S. application. See TMEP §1005.

An application under §66(a) of the Trademark Act (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), must be filed by the holder of the international registration. 15 U.S.C. §1141e(a); 37 C.F.R. §7.25. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1141(f)(a); 37 C.F.R. §2.33(e)(1). The verified statement in a §66(a) application for a trademark or service mark is part of the international registration on file at the International Bureau of the World Intellectual Property Organization (“IB”). The IB will have established that the international registration includes this verified statement before it sends the request for extension of protection to the United States Patent and Trademark Office (“USPTO”). See TMEP §804.05. The request for extension of protection remains part of the international registration, and ownership is determined by the IB. See TMEP §501.07 regarding assignment of §66(a) applications.

The provisions discussed above also apply to collective and certification marks with the caveat that the owner of such marks does not use the mark or have a bona fide intention to do so, but rather exercises control over its use by members/authorized users or has a bona fide intention, and is entitled, to exercise such control over the use by members/authorized users. See 15 U.S.C. §§1053, 1054; TMEP §§1303.02(a), 1304.03(a), 1306.01(a).