TMEP 1902.02(c): Name and Address of Applicant

This is the October 2015 Edition of the TMEP

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1902.02(c)    Name and Address of Applicant

Only the owner of the basic application and/or registration can file an international application. 15 U.S.C. §1141a(a). The international application must include the name and current address of the applicant. The name and entity of the international applicant must be identical to the name and entity of the applicant/registrant in the basic application and/or registration. 37 C.F.R. §7.11(a)(2).

On the prepopulated TEAS form, the applicant’s name cannot be changed, so the international applicant’s name will always be identical to the name of the owner of record for the basic application and/or registration.

When the applicant submits a paper form or a free-text TEAS form, an MPU trademark specialist will check the Trademark database to verify that the name of the international applicant is identical to the name of the owner of the basic application and/or registration.

If the names are not identical, the trademark specialist will check the Assignment Recordation Branch’s database to determine whether an assignment or other document affecting title that is not reflected in the Trademark database has been recorded. If assignment records do not show a clear chain of title to the international applicant, the USPTO will notify the applicant that the application cannot be certified. If the records of the Assignment Recordation Branch do show a clear chain of title, the trademark specialist will update the “Ownership” field in the Trademark database.

Because a delay in certifying and forwarding an international application to the IB may affect the date of the international registration, any request to record a change in ownership of a U.S. basic application and/or registration should be filed well in advance of the filing of the international application, to allow sufficient processing time. The USPTO strongly recommends use of the Electronic Trademark Assignment System (“ETAS”), at http://etas.uspto.gov. Assignments filed electronically are recorded much faster than assignments filed on paper. If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, the USPTO may be unable to certify or forward the international application to the IB within two months after the application is received in the USPTO. In this situation, the date of the international registration will be the date of receipt of the application in the IB. See TMEP §1902.04.

Applicants can search the Assignment Recordation Branch’s database at http://assignments.uspto.gov/assignments/?db=tm to determine whether an assignment or other document of title has been recorded, and can search the TSDR database at http://tsdr.uspto.gov/ to determine whether the ownership information in the Trademark databases has been updated. See TMEP §§504 et seq. regarding automatic updating of ownership information in the Trademark database.

If an international applicant is relying on an assignment (or other document transferring title) that has recently been filed for recordation but has not yet been recorded by the Assignment Recordation Branch, the applicant should include a copy of the assignment with the international application.

If an international application is denied certification because the applicant is not the same party as the owner named in the basic application(s) and/or registration(s), the applicant may petition the Director to review the refusal to certify. See TMEP §1902.03(a) regarding petitions to review refusal to certify.