803.06 Applicant May Not Be Changed
While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth (see TMEP §1201.02(c)), an application cannot be amended to substitute another entity as the applicant. If the application was filed in the name of a party who had no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration must be refused. 37 C.F.R. §2.71(d); TMEP §1201.02(b). Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1459-60, 7 USPQ2d 1335, 1335-36 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1239-44 (TTAB 2007); American Forests v. Sanders, 54 USPQ2d 1860, 1861-63 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1691 (TTAB 1991). The USPTO will not refund the application filing fee in such a case.
A void application cannot be cured by amendment or assignment. The true owner may file a new application (with a new filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, he or she may file a new application (with a new filing fee) at that time.
See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant, TMEP §803.01 regarding minor applicants, and TMEP §1201.02(e) and TMEP Chapter 500 regarding the transfer of ownership from the true owner to another party after the filing date.