TMEP 812.01: Proving Ownership of Prior Registrations

This is the October 2015 Edition of the TMEP

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812.01    Proving Ownership of Prior Registrations

If an applicant includes a claim of ownership of a prior registration, or a pending application, in the application as filed, the examining attorney must accept the claim without further proof of ownership and must not cite the registration for likelihood of confusion under §2(d) of the Act or advise the applicant that there may be a conflict with the earlier-filed application.

Generally, the applicant has the burden of proving ownership of a registration. The USPTO’s automated search system may not reflect the recordation of changes of ownership in the Assignment Recordation Branch. See TMEP §§502–502.03. If the applicant does not assert ownership of a pertinent registration in the application when it is filed, but the Trademark database indicates that an assignment was filed as to the registration, the examining attorney must check the database of the USPTO’s Assignment Recordation Branch to determine whether information contained in the database supports ownership of the registration in the applicant’s name. If records in the Assignment Recordation Branch's database indicate that the registration is owned by the applicant, the examining attorney must not cite the registration for likelihood of confusion.

However, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, and the USPTO's records do not indicate that it is owned by the applicant, the registration must be cited against the current application under §2(d). If so, the applicant must do one of the following to verify its ownership claim of the cited registration: (1) state for the record that the documents have been recorded in the Assignment Recordation Branch for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a §66(a) registration; (2) submit copies of documents evidencing the chain of title; or (3) submit a statement, supported by an affidavit or declaration under 37 C.F.R. §2.20, that the applicant is the owner of the cited registration. This also applies to pending conflicting applications that are cited as a potential bar to registration.

A refusal under §2(d) cannot be overcome by a claim of ownership of a registration made by the applicant in another registration file when the USPTO’s records do not indicate that the registration is owned by the applicant.