US TMEP 2007 Chapter 0800

The term “type of application” refers to the kind of application by which registration is requested, e.g., whether the application is a single-class application or a multiple-class application, or whether registration is sought on the Principal Register or on the Supplemental Register.

See TMEP Chapter 1300 regarding the examination of applications for different types of marks.

801.01 Single or Combined Application

801.01(a) Single (Single-Class) Application

A single-class application limits the goods or services for which registration is sought to goods or services in one of the classes in the classification schedules. The application may recite more than one item, if the items recited are all classified in one class. See TMEP §§1401 et seq. for additional information about classification.

801.01(b) Combined (Multiple-Class) Application

A combined or multiple-class application is an application to register the mark for items classified in two or more classes. The applicant must pay a filing fee for each class. The class numbers and corresponding goods or services must be listed separately, from the lowest to the highest number.

See TMEP §§1403 et seq. for further information about combined applications.

801.02 Principal Register or Supplemental Register

801.02(a) Act of 1946, Principal Register

The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051 through 1072). When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act. The advantages of owning a registration on the Principal Register include the following:

If the applicant seeks registration on the Principal Register, the application should state that registration is requested on the Principal Register. However, if the applicant does not specify a register, the United States Patent and Trademark Office (“USPTO”) will presume that the applicant seeks registration on the Principal Register.

801.02(b) Act of 1946, Supplemental Register

Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091 through 1096, provide for registration on the Supplemental Register. This is a continuation of the register provided for in the Act of March 19, 1920. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in §26 of the Act, 15 U.S.C. §1094.

If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.

See TMEP §§815 and 816 et seq. regarding examination procedure relating to the Supplemental Register.

An applicant may not seek registration on both the Principal and the Supplemental Register in the same application. If an applicant requests registration on both the Principal and the Supplemental Register in the same application, the examining attorney must require that the applicant amend to specify only one register, or file a request to divide under 37 C.F.R. §2.87.

A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).

802 Application Form

Applications under §66(a) of the Trademark Act will be sent to the USPTO electronically by the International Bureau of the World Intellectual Property Organization (“IB”).

The USPTO prefers that applicants file applications under §1 or §44 of the Trademark Act through the Trademark Electronic Application System (“TEAS”), available at http://www.uspto.gov (using either a TEAS or TEAS Plus application form), or on the USPTO’s pre-printed scannable form. The applicant may obtain the USPTO’s pre-printed scannable form by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.

The amount of the trademark application filing fee varies, depending upon whether the application (or the amendment adding classes to an existing application) is filed through TEAS or on paper. See TMEP §810. An applicant has three choices. The applicant can file:

Trademark applications may not be filed by facsimile (“fax”) transmission. 37 C.F.R. §2.195(d)(1); TMEP §306.01.

The USPTO strongly discourages self-created forms, but will accept them if they meet the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202). If a self-created form is used, the application should be on letter size (i.e., 8½ inches (21.6 cm.) by 11 inches (27.9 cm.)) paper, typewritten, double spaced, with margins of at least 1½ inches (3.8 cm.) at the left and top of the pages. The application should be written on only one side of the paper.

The USPTO does not generally require the submission of original documents, so the applicant may file a copy of a signed application. 37 C.F.R. §2.193(c)(1)(ii); TMEP §302.01.

803 Applicant

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 et seq. regarding ownership, and TMEP §§501 and 502 et seq. regarding 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 National Aeronautics & Space Admin. v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975); In re U.S. Department of the Interior, 142 USPQ 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:

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 et seq. 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).

803.02 Name of Applicant

The name of the applicant should be set out in its correct legal form. For example, a corporate applicant should be identified by the name set forth in the articles of incorporation.

If the applicant’s legal name includes the assumed name under which it does business, an assumed name designation should be used to connect the actual name with the assumed name. Assumed name designations include “d.b.a.” (doing business as), “a.k.a.” (also known as), and “t.a.” (trading as). The particular assumed name designation used is optional. Only the abbreviation of the assumed name designation will be printed in the Official Gazette and on the certificate of registration. If an applicant gives the assumed name designation in full, the abbreviation will automatically be used for printing purposes.

803.02(a) Individual

If the applicant is an individual person who is doing business under an assumed business name, the individual’s name should be set forth, followed by an assumed name designation (e.g., d.b.a., a.k.a., or t.a.) and by the assumed business name.

If an individual indicates that he or she is doing business under a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the USPTO will presume that relevant state law permits such a practice. The assumed name will be printed on the registration certificate.

If the application reflects an inconsistency between the owner name and the entity type, as to whether a corporation or an individual owns the mark, the examining attorney must require the applicant to clarify the record regarding ownership (e.g., if the name of an individual appears as the applicant, but the entity is listed as a corporation, or if a business is named as the applicant but the entity is listed as an individual). However, in view of the broad definition of a “person properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), the fact that the title of the person signing an application refers to a different entity is not in itself considered an inconsistency between owner and entity type that would warrant an inquiry as to who owns the mark.

See TMEP §803.03(a) for information about identifying an individual applicant’s entity, and TMEP §§803.06 and 1201.02(c) regarding Office policies regarding correction of an applicant’s name and entity.

803.02(b) Partnership, Joint Venture, or Other “Firm”

If a partnership, joint venture, or other “firm” has been organized under a particular business name, the application should be filed in that name. If the partnership or firm has not been organized under a business name, the names of the members should be listed as though they composed a company name. If a partnership or joint venture is doing business under an assumed name, this may be indicated, using an assumed name designation. See TMEP §803.02 regarding assumed name designations, and TMEP §803.03(b) for information about identifying a partnership or joint venture as a legal entity.

803.02(c) Corporation and Association

If the applicant is a corporation, the official corporate name must be set out as the applicant’s name. Listing an assumed business name is optional. The name of a division of the applicant should not be included in or along with the applicant’s name. If the applicant wishes to indicate in the application that actual use of the mark is being made by a division of the applicant, the applicant may provide a statement that “the applicant, through its division [specify name of division], is using the mark in commerce.” This statement should not appear in conjunction with the listing of the applicant’s name, and will not be printed on the registration certificate.

In unusual situations, one corporation may also be doing business under another name, even another corporate name. This sometimes happens, for example, when one corporation buys out another. In the unusual situation where a corporate applicant provides a DBA (“doing business as”), that includes a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its official corporate name, the USPTO will presume that relevant state law permits such a practice. The DBA will be printed on the registration certificate.

Associations should be identified by the full, official name of the association.

See TMEP §803.03(c) for information about identifying a corporation or association as a legal entity.

803.03 Legal Entity of Applicant

Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, such as partnership, joint venture, corporation, or association. The words “company” and “firm” are indefinite for purposes of designating a domestic applicant’s legal entity, because those words do not identify a particular type of legal entity in the United States. (However, the word “company” is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i).)

Whether the Office will accept the identification of an applicant’s entity depends on whether that entity is recognized by the applicant’s state of domicile.

If other material in the record shows a different type of entity than is set out in the written application, the examining attorney should ask for an explanation, and require amendment if necessary. However, in view of the broad definition of a “person properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), no explanation is usually required merely because the person signing a declaration has a title that refers to a different type of entity. See TMEP §§803.06 and 1201.02(c) regarding Office policies governing correction of an applicant’s name.

803.03(a) Individual or Sole Proprietorship

For an individual, it is not necessary to specify “individual,” but it is acceptable to do so. The applicant may state that he or she is doing business under a specified assumed company name. TMEP §803.02.

An applicant may identify itself as a sole proprietorship. If an applicant does so, the applicant must also indicate the state where the sole proprietorship is organized, in addition to the name and national citizenship of the sole proprietor.

If the application specifically identifies the applicant as a sole proprietorship and indicates the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor, the USPTO will accept the characterization of the entity. On the other hand, if the application refers to a sole proprietorship but lacks some of the necessary information or is ambiguous as to whether the applicant should be identified as a sole proprietorship or as an individual, the examining attorney must require appropriate clarification of the entity type.

803.03(b) Partnership, Joint Venture or Other “Firm”

After setting forth the applicant’s name and entity, the application of a partnership or a joint venture should specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii). In addition, domestic partnerships must set forth the names, legal entities, and national citizenship (for individuals), or state or country of organization (for businesses) of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §2.32(a)(3)(iii). These requirements apply to both general and limited partnerships. They also apply to a partnership that is a general partner in a larger partnership. Limited partners or silent or inactive partners need not be listed. The following format should be used:

“_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________ (name and citizenship).”

In the case of a domestic partnership consisting of ten or more general partners, if the partnership agreement provides for the continuing existence of the partnership in the event of the addition or departure of specific partners, the Office will require that the applicant provide the names, legal entities, and national citizenship (or the state or country of organization) of the principal partners only. If there are more than ten principal partners, the applicant need list only the first ten principal partners. If there is no class of principal partners, the applicant may list any ten general partners.

Upon the death or dissolution of a partner or other change in the members that compose a domestic partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership agreement provides for continuation of the partnership in the event of changes in partners. This same principle also applies to joint ventures. See TMEP Chapter 500 regarding changes of ownership.

The rule requiring names and citizenships of general partners seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.

The term “firm” is not an acceptable designation of the applicant’s entity, because it does not have a universally understood meaning. The examining attorney must require a definite term such as “partnership” or “joint venture” when it is necessary to identify these entities.

803.03(c) Corporation and Association

In the United States, the term “corporation” is proper for juristic entities that are incorporated under the laws of the various states or under special federal statutes. Likewise, “association” is a proper term for juristic entities organized under state laws or federal statutes that govern this form of organization. The term “company” is indefinite for describing a United States entity because it does not identify a particular juristic entity, but is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i) and TMEP Appendix D regarding foreign companies.

In addition to specifying that an applicant is a corporation, the application must specify the applicant’s state (for United States corporations) or country of incorporation (for foreign corporations). It is customary to follow the applicant’s name by the words “a corporation of the state (or country) of . . . .” This also applies to a nonprofit or tax-exempt corporation. If no state or country of incorporation is given for an applicant corporation, or the incorrect state or country of incorporation is given, this defect may be corrected by amendment. The amendment does not have to be verified.

For an association, the application must specify the United States state or foreign country under whose laws the applicant is organized or exists. The applicant should also indicate whether the association is incorporated or unincorporated. If a corporation or association exists by virtue of a specific state or federal statute, this should be stated. Verification is not required.

803.03(d) Joint Applicants

An application may be filed in the name of joint applicants or joint owners. Ex parte Pacific Intermountain Express Co., 111 USPQ 187 (Comm’r Pats. 1956); Ex parte Edward Taylor and Isabelle Stone Taylor doing business as Baby’s Spray-Tray Co., 18 USPQ 292 (Comm’r Pats. 1933).

An application by joint applicants must be verified by all the applicants, since they are individual parties and not a single entity. However, if only one of the joint applicants signs the verification, the Office will presume that he or she is signing on behalf of all the joint applicants, and will not require an additional verification or declaration, unless there is evidence in the record indicating that the party who signed the application was not in fact authorized to sign on behalf of all the joint applicants under 37 C.F.R. §2.33(a). See TMEP §804.04 regarding persons authorized to sign a verification on behalf of an applicant, and TMEP §712.01(a)(i) regarding the proper party to sign a response to an Office action filed by joint applicants who are not represented by an attorney.

Joint applicants are not the same as a joint venture. A joint venture is a single applicant, in the same way that a partnership is a single applicant. See TMEP §803.03(b) regarding joint ventures.

803.03(e) Trusts, Conservatorships, and Estates

If a trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. Thus, the examining attorney should require that the trust’s application be captioned as follows:

The Trustees of the XYZ Trust, a California trust, the trustees comprising John Doe, a United States citizen, and the ABC Corporation, a Delaware corporation.

The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. Then the state under whose laws the trust exists must be set forth. Finally, the names and citizenship of the individual trustees must be listed.

The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a United States citizen.

The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, United States citizens.

803.03(e)(i) Business Trusts

Most states recognize an entity commonly identified as a “business trust,” “Massachusetts trust,” or “common-law trust.” A business trust has attributes of both a corporation and a partnership. Many states have codified laws recognizing and regulating business trusts; other states apply common law. The Office must accept the entity designation “business trust,” or any appropriate variation provided for under relevant state law.

The business trust is created under the instructions of the instrument of trust. Generally, the “trustee” has authority equivalent to an officer in a corporation. Laws vary to some extent as to the authority conferred on various individuals associated with the business trust.

The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. The state under whose laws the trust exists, and the names and citizenship (or state of incorporation or organization) of the individual trustees, must also be set forth. Accordingly, the examining attorney should require that the business trust's application be captioned as follows:

The Trustees of the DDT Trust, a California business trust, the trustees comprising Sue Smith, a United States citizen, and the PDQ Corporation, a Delaware corporation.

For the purpose of service of process, the business trust is essentially like a corporation. Therefore, it is not necessary to identify the beneficiaries or equitable owners of the business trust in identifying the entity.

803.03(f) Governmental Bodies and Universities

It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis. The following are just a few examples of acceptable governmental entities:

City of Richmond, Virginia, a municipal corporation organized under the laws of the Commonwealth of Virginia.

These examples are not exhaustive of the entity designations that are acceptable.

The structure of educational institutions varies significantly. The following are examples of acceptable university entities:

These examples are not exhaustive of the entity designations that are acceptable.

The designations “education institution” and “educational organization” are not acceptable. If the applicant uses either of these designations to identify the entity, the examining attorney must require the applicant to amend the entity designation to a legally recognized juristic entity.

803.03(g) Banking Institutions

The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. The following are examples of acceptable descriptions of banking institutions:

803.03(h) Limited Liability Companies

Most states recognize an entity commonly identified as a “limited liability company” or “LLC.” The entity has attributes of both a corporation and a partnership. Therefore, the Office must accept the entity designation “limited liability company.” The examining attorney may accept appropriate variations of this entity, with proof that the entity exists under the law of the relevant state.

If “LLC” appears in the applicant’s name, but the entity is listed as a corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation.

The applicant must indicate the state under whose laws the limited liability company is established. It is not necessary to list the “members” or owners of the limited liability company when identifying the entity.

See TMEP §712.01(a)(vii) regarding the proper party to sign a response to an Office action filed by a limited liability company that is not represented by an attorney.

Limited Liability Corporation. A business organization known as a “limited liability corporation” is currently not recognized. If an applicant’s entity type is identified as a limited liability corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation. If the applicant believes that it is a limited liability corporation, then the applicant must provide proof that such a legal entity exists under the appropriate state statute.

803.03(i) Common Terms Designating Entity of Foreign Applicants

In designating the legal entity of foreign applicants, acceptable terminology is not always the same as for United States applicants. The word “corporation” as used in the United States is not necessarily equivalent to juristic entities of foreign countries; the word “company” is, sometimes, more accurate. If the applicant is from the United Kingdom or another commonwealth country (e.g., Canada or Australia) and the term “company” is used, no inquiry is needed. “Limited company” is also acceptable in commonwealth countries. There is a complete list of commonwealth countries on the commonwealth website at http://www.thecommonwealth.org. In any other case, the examining attorney must clarify what type of entity is applying.

A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so.

Appendix D of this manual lists common terms and abbreviations used by various foreign countries to identify legal commercial entities. If a designation or its abbreviation appears in the appendix, the examining attorney may accept the entity designation without further inquiry. The applicant must specify the foreign country under whose laws it is organized, but no additional information is required, even if additional information would be required for a United States entity of the same name. For example, it is not necessary to set forth the names and citizenship of the partners of a foreign partnership. The rule requiring names and citizenships of general partners seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.

If a foreign entity designation or abbreviation does not appear in Appendix D, the examining attorney must inquire further into the specific nature of the entity. The examining attorney may request a description of the nature of the foreign entity, if necessary.

Canadian entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, and does not permit an applicant to specify a Canadian province in this field. Therefore, if the applicant is organized under the laws of a Canadian province, the applicant should identify its entity type as “Other,” and select Canada as the country under which it is organized. The entry of “Other” will bring up a “Specify Entity Type” text field in which the applicant should specify the type of entity and the province under which it is organized (e.g., “corporation of Ontario”).

803.03(j) Federally Recognized Indian Tribe

A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant’s entity.

803.03(k) Limited Liability Partnerships

Most states recognize an entity commonly identified as a “limited liability partnership” (“LLP”). An LLP is separate and distinct from a limited partnership, and is more closely associated with a limited liability company in that it has attributes of both a corporation and a partnership. Therefore, the Office must accept the entity designation “limited liability partnership.” The examining attorney may accept appropriate variations of this entity (e.g., "limited liability limited partnership” or “LLLP”), with proof that the entity exists under the law of the relevant state.

The applicant must indicate the state under whose laws the limited liability partnership is established. It is not necessary to list the partners of the limited liability partnership when identifying the entity.

See TMEP §712.01(a)(viii) regarding the proper party to sign a response to an Office action filed by a limited liability partnership that is not represented by an attorney.

803.04 Citizenship of Applicant

Under 37 C.F.R. §2.32(a)(3), an application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. If ambiguous terms such as “American” are used, the examining attorney must require the applicant to clarify the record by setting forth the required information with greater specificity (e.g., “United States”).

An individual applicant should set forth the country of which he or she is a citizen. Current citizenship information must be provided; a statement indicating that the applicant has applied for citizenship in any country is not relevant or acceptable. If an individual is not a citizen of any country, a statement to this effect is acceptable.

If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate. It is Office policy to print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the Office will indicate only one country of citizenship for each person.

For a corporation, the application must set forth the United States state or foreign country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).

Canadian corporations may be organized under either national or provincial laws. However, the TEAS form does not permit an applicant to identify its entity as a corporation of a Canadian province. Therefore, if the applicant is a corporation of a Canadian province, the applicant should identify its citizenship as “Canada,” and identify its entity as “Other.” The entry of “Other” will bring up a text field in which the applicant should type “corporation of <specify province>.”

For an association, the application must set forth the United States state or foreign country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii).

A partnership or other firm must set forth the United States state or foreign country under the laws of which the partnership is organized. Domestic partnerships must also provide citizenship information for each general partner in the partnership or active member in the firm. 37 C.F.R. §2.32(a)(3)(iii). This requirement also applies to a partnership that is a general partner in a larger partnership. See TMEP §803.03(b) for the proper format for identifying a partnership. Given the varying legal effects of partnership status in foreign countries, the relevance of the name and citizenship information for each partner has not been established. Therefore, for foreign partnerships, it is not necessary to provide the names and citizenship of the partners. See TMEP §803.03(i) for further information about foreign applicant entities.

For joint applicants or a joint venture, the application should set forth the citizenship or United States state or foreign country of organization of each party.

803.05 Address of Applicant

The written application must specify the applicant’s mailing address. 37 C.F.R. §2.32(a)(4). Addresses should include the United States Postal Service ZIP code or its equivalent. The applicant’s address may consist of a post office box.

For an individual, the application must set forth either the business address or the residence address.

If the application sets out more than one address, the applicant should designate the address to be included on the registration certificate.

For a partnership or other firm, only the address of the business need be set forth -- not the addresses of the partners or members.

For a corporation or association, the business address should be set forth. If the corporation’s business address is not in its state of incorporation, the applicant should set out the address where the applicant is domiciled.

The application must also include an address for correspondence concerning the application. See 37 C.F.R. §§2.18 and 2.21(a)(2). This is referred to as the correspondence address. See TMEP §§603 et seq.

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. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., ___ USPQ2d ___, Canc. No. 92032524 (TTAB June 14, 2007); American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Lettmann, 183 USPQ 369 (TTAB 1974); Dunleavy v. Koeppel Steel Products, Inc., 114 USPQ 43 (Comm’r Pats. 1957), aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Richardson Corp. v. Richardson, 51 USPQ 144 (Comm’r Pats. 1941); Celanese Corporation of America v. Edwin Crutcher, 35 USPQ 98 (Comm’r Pats. 1937). The Office 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 another application (including a filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, he or she may file another application (including a 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 situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.

804 Verification and Signature

An application must include a statement that is verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §§1051(a)(3) and 1051(b)(3); 37 C.F.R. §§2.32(b) and 2.33(a).

In applications under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01 et seq. regarding the form of the oath or declaration, TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

In §66(a) applications, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). See TMEP §§804.06 and 1904.01(c).

804.01 Form and Wording of Verification in §1 or §44 Application

The format of the verification in an application under §1 or §44 of the Trademark Act may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)).

804.01(a) Verification with Oath

The verification is placed at the end of the application. It should first set forth the venue; followed by the signer’s name (or the words “the undersigned”); then the necessary statements (TMEP §804.02); concluding with the signature. After the signature, there should be the jurat for the officer administering the oath, and an indication of the officer’s authority (such as notarial seal).

The form of the verification depends on the law of the jurisdiction where the document is executed, so variations of the above form are acceptable. If there is a question as to the validity of the verification, the examining attorney should ask the applicant if the verification complies with the laws of the applicant’s jurisdiction. See TMEP §804.01(a)(i) regarding verifications made in a foreign country.

If the verification is notarized but does not include the notarial seal, the examining attorney must require a substitute affidavit or declaration under 37 C.F.R. §2.20.

If the verification is notarized but has not been dated, the applicant must submit either a statement from the notary public attesting to the date of signature and notarization, or a substitute affidavit or declaration under 37 C.F.R. §2.20.

804.01(a)(i) Verification Made in Foreign Country

Verification (with oath) made in a foreign country may be made: (1) before any diplomatic or consular officer of the United States; or (2) before any official authorized to administer oaths in the foreign country. In those foreign countries that are members of The Hague Convention Abolishing the Requirement of Legislation for Foreign Public Documents, a document verified before a foreign official should bear or have appended to it an apostille (i.e., a certificate issued by an official of the member country).

Member countries, territories, and Departments in Europe participating in this Convention are: Anqulla, Antigua & Barbuda, Argentina, Armenia, Australia, Austria, Bahamas, Bailiwick of Guernsey, Barbados, Belarus, Belgium, Belize, Bermuda, Bosnia & Herzegovina, Botswana, British Antarctic, British Guiana (Guyana), British Soloman Islands, Cayman, Croatia, Cyprus, Dominica, El Salvador, Falkland Islands, Figi, Finland, France, French Guiana, Germany, Gibraltar, Gilbert & Ellice Islands (Kiribati), Greece, Grenada, Guadeloupe, Hong Kong, Hungary, Isle of Man Jersey, Israel, Italy, Japan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malawi, Malta, Marshall Islands, Martinique, Mauritius, Mexico, Montserrat, Netherlands, New Hebrides (Vanuatu), Norway, Panama, Portugal, Reunion, Saint Christopher & Nevis, Saint Helena, Saint Lucia, Saint Vincent, San Marino, Seychelles, Slovenia, South Africa, Southern Rhodesia (Zimbabwe), Spain, Suriname, Swaziland, Switzerland, Tonga, Turkey, Turks & Caicos, United Kingdom & Northern Ireland, and the Virgin Islands.

An apostille must be square shaped with sides at least 9 centimeters long. The following is the prescribed form for an apostille:

APOSTILLE

(Convention de La Haye du Oct. 5, 1961)

1. Country: ________________________

This public document

2. has been signed by ________________

3. acting in capacity of _______________

4. bears the seal/stamp of ____________

CERTIFIED

5. at ____________________________

6. the ___________________________

7. by ____________________________

8. No. ___________________________

9. Seal/stamp: _____________________

10. Signature: ______________________

If a verification is made before a foreign official in a country that is not a member of the Hague Convention, the foreign official’s authority must be proved by a certificate of a diplomatic or consular officer of the United States. 15 U.S.C. §1061.

Declarations under 37 C.F.R. §2.20 and 28 U.S.C. §1746 by foreign persons do not have to be made before a United States diplomatic or consular officer, or before a foreign official authorized to administer oaths. A declaration under 28 U.S.C. §1746 that is executed outside the United States must allege that “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” See TMEP §804.01(b).

804.01(b) Declaration in Lieu of Oath

Under 35 U.S.C. §25, the Office is authorized to accept a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath. These declarations can be used whenever the Act or rules require that a document be verified or under oath.

When the language of 37 C.F.R. §2.20 or 28 U.S.C. §1746 is used with a document, the document is said to have been subscribed to (signed) by a written declaration rather than verified by oath (jurat).

When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document.

In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom. A declaration under 37 C.F.R. §2.20 should read as follows:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

Instead of using the language of 37 C.F.R. §2.20, an applicant may use the language of 28 U.S.C. §1746, which provides as follows:

Wherever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath, or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specific official other than a notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:

(1) If executed outside the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).

(2) If executed within the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date).

NOTE: Title 35 of the United States Code pertains specifically to the United States Patent and Trademark Office and, therefore, is preferred to 28 U.S.C. §1746, which is a statute of general application relating to verification on penalty of perjury.

A declaration that does not attest to an awareness of the penalty for perjury is unacceptable. 35 U.S.C. §25. In re Hoffmann-La Roche Inc., 25 USPQ2d 1539 (Comm’r Pats. 1992) (failure to include a statement attesting to an awareness of the penalty for perjury, which is the very essence of an oath, is not a “minor defect” that can be provisionally accepted under 35 U.S.C. §26), overruled on other grounds by In re Moisture Jamzz Inc., 47 USPQ2d 1762, 1764 (1997); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Laboratories Goupil, S.A., 197 USPQ 689 (Comm’r Pats. 1977).

The signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a declaration pursuant to a general power of attorney. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). In a TEAS submission, the person(s) identified as the signer(s) must manually enter the elements of the electronic signature. The rules do not provide authority for an attorney to sign another person's declaration. Dermahose, 1795. See TMEP §804.05 regarding signature of documents filed through TEAS.

If a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 is not dated, the examining attorney must require the applicant to state the date on which the declaration was signed. This statement does not have to be verified, and may be entered through a note to the file.

See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark.

804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application

The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3) and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), 1051(b)(3) and 1126, and 37 C.F.R. §§2.33 and 2.34. These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §804.06 regarding the requirements for verification of a §66(a) application.

Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” The language in 37 C.F.R. §2.20 that “all statements made of [the verifier’s] own knowledge are true, and all statements made on information and belief are believed to be true” satisfies this requirement.

Use in Commerce. If the filing basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the original application, the verified statement must allege that the mark was in use in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. §2.34(a)(1)(i).

Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2) and 1126(e). If the verification is not filed with the original application, the verified statement must allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii).

Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1).

In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant to be entitled to use the mark in commerce and that no one else, to the best of his or her knowledge and belief, has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive. See 15 U.S.C. §1051(b)(3)(A); 37 C.F.R. §2.33(b)(2).

While the correct language for an application filed under §1(b) or §44 is “entitled to use,” if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the Office will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.

Concurrent Use. The verification for concurrent use should be modified to indicate an exception, i.e., that no one else except as specified in the application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See TMEP §§1207.04 et seq. regarding concurrent use registration.

Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See TMEP §§1201.03 et seq. regarding use by related companies.

Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements to the effect that “the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce...” are unacceptable.

Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.

804.03 Time Between Execution and Filing of Papers - §1 or §44 Application

All applications and papers must be filed within a reasonable time after their execution. Under 37 C.F.R. §2.33(c), if the verified statement supporting an application for registration is not filed within a reasonable time after it is signed, the Office will require the applicant to submit a substitute affidavit or declaration under 37 C.F.R. §2.20 of the applicant’s continued use or bona fide intention to use the mark in commerce. Re-execution is also required where allegations of use and requests for extensions of time to file a statement of use are not filed within a reasonable time after the date of execution. 37 C.F.R. §§2.76(i), 2.88(k), and 2.89(h); TMEP §§1104.09(b), 1108.02(b) and 1109.11(c).

The Office considers one year between execution and filing as reasonable for all applicants and all papers. No new verification should be required if the paper is filed within one year of execution. If an application, allegation of use, or request for extension of time to file a statement of use is filed more than one year after its execution, the examining attorney will require that the applicant submit re-executed papers or a statement that is verified or includes a declaration under 37 C.F.R. §2.20, of the applicant’s continued use or bona fide intent to use the mark in commerce, as appropriate.

If an applicant files an application that is signed and lists a date of execution that is subsequent