TMEP 803.01: Who May Apply

October 2017 Edition of the TMEP

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803.01    Who May Apply

An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce.  Normally the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs.  See TMEP §§1201–1201.07(b)(iv) regarding ownership, and TMEP §§501 and 502–502.03 regarding assignment of marks and changes of ownership.

If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned. 37 C.F.R. §2.71(d). See TMEP §803.06 and cases cited therein.

Applicants may be natural persons or juristic persons.  Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organizations capable of suing and being sued in a court of law. 15 U.S.C. §1127.  An operating division, or the like, that is merely an organizational unit of a company and not a legal entity that can sue and be sued, may not own or apply to register a mark. See TMEP §1201.02(d).

Nations, states, municipalities, and other related types of bodies operating with governmental authorization may apply to register marks that they own. See In re Mohawk Air Servs. Inc., 196 USPQ 851, 854 (TTAB 1977); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975); In re U.S. Dep't of the Interior, 142 USPQ 506, 506 (TTAB 1964).

The question of whether an application can be filed in the name of a minor depends on state law.  If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor.  Otherwise, the application should be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian.  An example of the manner in which the applicant should be identified in such cases is:

John Smith, United States citizen, (parent/legal guardian) of Mary Smith.

If the record indicates that the named applicant is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled.  If the minor cannot enter into binding legal obligations, the examining attorney must require correction of the applicant-identifying information in the manner shown above, if necessary.

If a minor comes of age during the prosecution of an application in which his or her parent/legal guardian is identified as the applicant, the application may be amended to change the applicant’s name.  No assignment is required in such cases. However, the minor must also state his or her citizenship.  See also TMEP Chapter 500 regarding assignments, name changes, and issuance of a registration in the name of an assignee or in an applicant’s new name.

See also TMEP §1002 regarding eligibility to file an application under §44 of the Trademark Act, 15 U.S.C. §1126, and TMEP §1901 regarding eligibility to file a request for an extension of protection of an international registration to the United States under §66(a) of the Act, 15 U.S.C. §1141f(a).