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Trademark Manual of Examining Procedure
April 2014
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0800  

Chapter 800 - Application Requirements

801    Types of Applications

The wording “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 700 regarding the examination of applications in general, and Chapter 1300 regarding the examination of applications for service marks, collective marks, and certification 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 only 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:

  • Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
  • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b) and 1115(a));
  • A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c); TMEP §201.02);
  • The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
  • The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124);
  • The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses (15 U.S.C. §§1065 and 1115(b)); and
  • The use of the United States registration as a basis to obtain registration in foreign countries.

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. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1256 (TTAB 2012) (finding that while ownership of a registration on the Supplemental Register established opposer’s standing to oppose registration of applicant's mark, it did not establish that opposer owned a proprietary interest in a mark).

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 are 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:

  • A paper application at the higher fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
  • A regular TEAS application at a lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
  • A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).

The current fee schedule is available on the USPTO website at http://www.uspto.gov.

Note:  Applications that are downloaded from TEAS or TEAS Plus, printed, and mailed to the USPTO are considered paper applications and are subject to the paper application filing fee.

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 application must be in the English language.  37 C.F.R. §§2.21(a) and 2.32(a).

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(a) and (b); TMEP §302.01.

See TMEP §§819 et seq. regarding TEAS Plus applications.

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 assignment of marks and 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:

John Smith, United States citizen, (parent/legal guardian) of Mary Smith.

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 the applicant” in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a) and 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 USPTO 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 USPTO 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 indicates that the applicant is a different type of entity than is set out in the written application, the examining attorney must 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 the applicant” in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a) and 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 USPTO policies governing correction of an applicant’s name.

803.03(a)   Individual or Sole Proprietorship

Individual.  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.

In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national.  Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Rule 9(4)(b)(i) (2008).  The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO.  In a §66(a) application, if the “Nationality of Applicant” field appears in the Trademark Image Capture and Retrieval System (“TICRS”) (which is available to the public through the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website at http://tsdr.uspto.gov/), this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to the two-letter code set forth in this field.  The list of country codes appears in the MM2 International Registration application form at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf. A separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and "Legal Nature: Place Incorporated" fields will state “Not Provided.”

If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it.  No inquiry as to the applicant’s entity or citizenship is necessary.  If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship.  Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.

Sole Proprietorship.  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.

A sole proprietorship generally means a business which has only one owner.  Therefore, if an application identifies two persons or two different entities as a “sole proprietorship,” this is an ambiguity that requires clarification of the entity type. Note, however, that in California a husband and wife can be classified as a sole proprietorship.

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) and (iv).  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, legal entity, and citizenship of individual partner; or name, legal entity, and state or country of incorporation or organization of juristic partner).”

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 USPTO 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.

See TMEP §803.03(k) regarding limited liability partnerships.

803.03(c)   Corporation, Association, Organization, and Company

Corporation.  In the United States, the term “corporation” is proper for juristic entities incorporated under the laws of the various states or under special federal statutes.  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, or the incorrect state or country of incorporation, is given for an applicant corporation, this defect may be corrected by amendment.  The amendment does not have to be verified.  If a corporation exists by virtue of a specific state or federal statute, this should be stated.

Association.  “Association” and “nonprofit association” are acceptable terms to identify juristic entities organized under state laws or federal statutes that govern this form of organization.  A domestic association must specify the state under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated.  A foreign association must specify the country under whose laws the applicant is organized or exists and indicate whether the association is incorporated or unincorporated, unless the country and the designation or description “association/associazione” appear in Appendix D. This also applies to a domestic or foreign nonprofit or tax-exempt association.  If an association exists by virtue of a specific state or federal statute, this should be stated.  Verification is not required.

Company.  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.

Organization.  “Organization” and “nonprofit organization” are indefinite to identify juristic entities.  If an applicant’s entity type is identified as a “nonprofit organization,” the examining attorney must require amendment of the entity, or proof that such a legal entity exists under the appropriate state statute or foreign country law.

803.03(d)   Joint Applicants

An application may be filed in the names 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).  The terms “joint applicant(s)" or “joint owner(s)” reflects the relationship of multiple applicants as to a particular mark, but does not identify a particular type of legal entity in the United States.  Therefore, the application must name each of the joint applicants, and must set forth the citizenship (or the state or nation of organization for a juristic applicant) of each of the joint applicants.  37 C.F.R. §§2.32(a)(2) and (3); TMEP §§803.02 and 803.03.  The application may also state the joint applicant relationship; however, where an application identifies two or more individuals or entities as the applicant, and separately sets forth the citizenship or state of organization of each, the USPTO will presume that the entity is that of joint applicants, if the record is not otherwise contradictory.  If, however, the legal entity is set out as “joint applicant(s)” or “joint owner(s),” the examining attorney must require each applicant to clarify the nature of its legal entity as an individual or juristic person.

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 USPTO 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. §2.193(e)(1).  This does not apply to a response to an Office action submitted by joint applicants who are not represented by a practitioner authorized under 37 C.F.R. §11.14 to practice in trademark cases (“qualified practitioner”).  Such a response must be signed personally by each of the joint applicants.  37 C.F.R. §§2.62(b) and 2.193(e)(2); TMEP §611.06(a).  See TMEP §§611.03(a) and 804.04 regarding persons authorized to sign a verification on behalf of an applicant.

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 same format generally applies to conservatorships and estates as follows:

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 USPTO will 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:

Department of the Air Force, an agency of the United States.

Maryland State Lottery Agency, an agency of the State of Maryland.

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:

Board of Regents, University of Texas System, a Texas governing body.

University of New Hampshire, a nonprofit corporation of New Hampshire.

Auburn University, State University, Alabama.

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:

First American Bank of Virginia, a Virginia corporation.

Pathway Financial, a federally chartered savings and loan association.

This is not an exhaustive listing of acceptable entity designations.

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 USPTO 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.  For example, some states recognize an entity identified as a “low-profit-limited-liability company” or “L3C,” which combines the features of a for-profit LLC and a nonprofit organization.

If “LLC” or “L3C” 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 §611.06(g) 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.

See TMEP §803.03(k) regarding limited liability partnerships.

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” (or the abbreviation “co.”) is used, no inquiry is needed.  “Limited company” is also acceptable in China and in commonwealth countries.  There is a list of commonwealth countries on the commonwealth website at http://www.thecommonwealth.org/Internal/142227/members/.  In any other case, when the term “company” is used, the examining attorney must clarify what type of entity is applying.

“Limited corporation” is also an acceptable entity designation for a foreign applicant.

Appendix D of this manual lists common foreign designations, and their abbreviations, used by various foreign countries to identify legal commercial entities. The appendix also includes a description (Joint Stock Company, Cooperative Society, Trading Partnership, etc.) of the foreign designation and, in some cases, the equivalent United States entity. If a foreign designation, its abbreviation, or a description appears in the appendix, the examining attorney may accept any of those terms as the entity designation without further inquiry. The applicant may also choose to specify the legal entity by indicating the entity that would be its equivalent in the United States. However, if an applicant identifies itself by a name that includes a foreign entity designation in Appendix D (e.g., “Business SpA”), but provides a characterization of the entity that does not match the description (e.g., General Partnership), the examining attorney must clarify the nature of the applicant’s entity.  

If a foreign entity designation, its abbreviation, or its description 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.

The applicant must also 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 (37 C.F.R. §2.32(a)(3)(iii)) 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.

Foreign 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, but does not permit an applicant to specify a foreign province or geographical region in this field.  Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”).  In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.

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 USPTO will 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 §611.06(h) regarding the proper party to sign a response to an Office action filed by a limited liability partnership that is not represented by a qualified practitioner.

See also TMEP §803.03(h) regarding limited liability companies.

803.04   Citizenship of Applicant

An application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized.  37 C.F.R. §2.32(a)(3).  If ambiguous terms are used, the examining attorney must require the applicant to clarify the record by setting forth the citizenship with greater specificity. For example, the term “American” is ambiguous because it could refer to a citizen of North, South, or Central America. Therefore, “United States” or “U.S.A.” is the appropriate citizenship designation for applicants who are citizens of the United States of America. However, terms such as “Brazilian,” Colombian,” and “Welsh” are acceptable citizenship designations because each refers to a specific country.

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.

In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national.  Common Regs, Rule 9(4)(b)(i).  The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO.  In a §66(a) application, if the “Nationality of Applicant” field appears in TICRS, this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to the two-letter code set forth in this field.  The list of country codes appears in the MM2 International Registration application form, which can be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf. A separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and Legal Nature: Place Incorporated” fields will state “Not Provided.”

If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it.  No inquiry as to the applicant’s entity or citizenship is necessary.  If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship.  Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.

If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate.  The USPTO will print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the USPTO 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).

Foreign 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, but does not permit an applicant to specify a foreign province or geographical region in this field.  Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”).  In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.

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).  See TMEP §803.03(c).

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.  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.  Domestic joint ventures must also provide citizenship information for all active members of the joint venture.  37 C.F.R. §2.32(a)(3)(iv).  See TMEP §803.03(b) for the proper format for identifying a joint venture.

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 for addresses outside the United States.  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.

For joint applicants, the application should include addresses for each party.

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 §§609 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., 84 USPQ2d 1235 (TTAB 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 Corp. of America v. Edwin Crutcher, 35 USPQ 98 (Comm’r Pats. 1937).  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 another 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 another 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 situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.