BitLaw

812    Identification of Prior Registrations of Applicant

Trademark Rule 2.36, 37 C.F.R. §2.36, states that prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner listed in the application differs from the owner last listed in the Office’s records for such prior registrations.  The rule does not precisely define when an applicant should claim ownership of prior registration(s), and the examining attorney may exercise discretion in invoking the rule.  The main purpose of the rule is to provide the examining attorney with information necessary for proper examination.  The information does not have to be given in any specific form.  The applicant’s claim of ownership of prior registrations will be printed in the Official Gazette and on the registration certificate.

Normally, identification of a registration is necessary because the registration would, if not owned by the applicant, be a basis for refusal under §2(d) of the Act, 15 U.S.C. §1052(d).  Occasionally, it is desirable to ask an applicant to identify a particular registration as being owned by the applicant merely to provide relevant information.

It is not necessary to assert ownership of expired or cancelled registrations.  If the applicant wants to include a reference to a cancelled or expired registration, the applicant should indicate that the applicant owns the mark disclosed in the cancelled or expired registration, because technically one does not "own" a registration that is not in force and effect.  Claims of ownership of pending applications, expired or cancelled registrations, and registrations that are unrelated to an application will not be printed.

Before approving an application that includes a claim of ownership of prior registrations for publication or registration, the examining attorney must ensure that the registrations are active.  If a registration is not active, the claim of ownership should not be printed.

All information in the "Prior Registration" field in the application record in the Trademark database will automatically be printed in the Official Gazette and on the certificate of registration.  Accordingly, when an examining attorney determines that a claim of ownership of a prior registration should not be printed (e.g., because the registration is no longer active or is irrelevant to the registrability of the mark in the subject application), the examining attorney must ensure that the claim of ownership is deleted from the Trademark database, and enter a Note to the File in the record indicating that the claim has been deleted.  The document containing the information deleted from the Trademark database will remain of record for informational purposes.  See TMEP §817 regarding preparation of an application for publication or issuance.

If the applicant owns numerous prior registrations for the same or similar marks, in which the owner(s) last listed in the Office’s records differs from the owner(s) listed in the application, the applicant should identify all such prior registrations in the application. If the applicant lists numerous prior registrations, the database will only show three registration numbers and will indicate "and others" as to any additional registration numbers. Therefore, the examining attorney must ensure that the claim of ownership identifies the two or three most relevant registration numbers.

In a TEAS Plus application, if the applicant owns one or more registrations for the same mark, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, the initial application must include a claim of ownership of the registration(s).  If this information is not included in the initial application, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application. 37 C.F.R. §2.22(a)(19).  See TMEP §819.01(p) for further information.