TMEP 819.01(p): Prior Registration of the Same Mark

October 2017 Edition of the TMEP

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819.01(p)    Prior Registration of the Same Mark

If the applicant owns one or more registrations for the same (i.e., identical) mark as of the application filing date, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, the application must include a claim of ownership of the prior registration(s), identified by the United States registration number(s). 37 C.F.R. §§2.22(a)(19), 2.36. See TMEP §812.  The TEAS Plus form accepts the entry of up to three registration numbers.  If the applicant owns more than three registrations for the same mark for which the last listed owner(s) of the prior registration(s) differs from the owner of the application, the TEAS Plus applicant may check the box "and others" after entering the numbers for the three claimed registrations.

The additional fee is required if a claim of ownership of registration(s) for the same mark, for which the last listed owner(s) of the prior registration(s) differs from the owner of the application, is omitted and the failure to claim the prior registration(s) would result in the issuance of a refusal under §2(d), 15 U.S.C. §1052(d). 37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  If the initial application includes an ownership claim for the same mark, the application will not lose TEAS Plus status if the claim is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.

No additional fee is required if a list of claimed registrations for the same mark is incomplete (e.g., applicant owns three registrations for the same mark and only claims two of them), but the examining attorney may require a claim of ownership of additional registrations for the same mark during examination.

No additional fee is required if an applicant fails to claim ownership of a registration(s) for a similar mark (e.g., mark in application is ABC and applicant fails to claim ownership of a registration for ABC WEB BUILDERS).  However, the examining attorney will require a claim of ownership of similar marks during examination, where appropriate.