1604.07   Ownership and Who May File §8 Affidavit or Declaration

1604.07(a)   Affidavit or Declaration Must Be Filed by Owner

The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration.  Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, 15 U.S.C. §1058(a), (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines.  37 C.F.R. §§2.160(a) and 2.161(a).

If it is unclear whether the party who filed the affidavit or declaration is the present owner, the Post Registration staff will issue an Office action requiring the party to establish its ownership.  If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, the owner may file evidence to establish ownership, even if the filing period set forth in §8 of the Act has expired.  There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.   See TMEP §1604.07(b) .

If the affidavit or declaration was not filed in the name of the owner of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true owner may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §2.6, and, if applicable, a specimen of use for each class.  If a new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration.  If a correction is submitted, the owner must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner.  37 C.F.R. §2.193(e)(1); TMEP §1604.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §2.161(b).

If the affidavit or declaration was not filed in the name of the owner of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time.  15 U.S.C. §1058(c).  The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected.  The true owner may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge.  37 C.F.R. §2.6(a)(20).  If a correction is submitted, the owner must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner.  37 C.F.R. §2.193(e)(1); TMEP §1604.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §2.161(b).

See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.

1604.07(b)     Establishing Ownership

When the affidavit or declaration is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit or declaration unless there is a clear chain of title from the original owner to the party who filed the affidavit or declaration.  37 C.F.R. §3.73(b); TMEP §502.01 .

When the affidavit or declaration is filed, the Post Registration staff will check the records of the Assignment Recordation Branch of the USPTO, available at http://assignments.uspto.gov/assignments  .  If the records of the Assignment Recordation Branch show a clear chain of title in the party who filed the affidavit or declaration, no inquiry will be issued.  The Post Registration staff will enter the change of ownership into the automated records of the Trademark Operation, if necessary.

If the records of the Assignment Recordation Branch do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration.  To establish ownership, the party must:  (1) record documents in the Assignment Recordation Branch of the USPTO that show each change of ownership, and include a statement in the response to the Office action that the documents have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit or declaration.  37 C.F.R. §3.73(b)(1); TMEP §502.01 .

"Documentary evidence of a chain of title from the original owner to the assignee" (37 C.F.R. §3.73(b)(1)(i)) normally consists of the same type of documents that would be recorded in the Assignment Recordation Branch, e.g., assignment documents, certificates of merger, or certificates of change of name.  In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.

The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired.  If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.

See TMEP §1604.07(a) regarding an affidavit or declaration filed by a party who was not the owner of the registration at the time of filing.

1604.07(c)   Acceptance Notice Issued in Name of Owner of Record

The notification of acceptance of a §8 affidavit or declaration is issued in the name of the owner of record, as shown in the Trademark database.

When a party other than the original owner files a §8 affidavit or declaration, the USPTO will accept the affidavit or declaration if the new owner submits documentary evidence of the chain of title ( see TMEP §1604.07(b) ), even if the new owner does not record the documents of ownership in the Assignment Recordation Branch.  37 C.F.R. §3.73.  However, the USPTO will not issue the notice of acceptance of the §8 affidavit or declaration in the name of the new owner unless the new owner:  (1) records the appropriate document in the Assignment Recordation Branch; and (2) notifies the Post Registration staff that the document has been recorded.  37 C.F.R. §3.85.

See TMEP §§504 et seq . regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Post Registration staff that the document has been recorded.   See also TMEP §505.02 regarding requests to update ownership information after registration, TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, TMEP §502.01 regarding establishing ownership of a registration, and TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.

1604.07(d)   Changes of Legal Entity

The procedures for establishing ownership, as discussed in TMEP §1604.07(b) , also apply to changes of name and changes of legal entity.  See TMEP §1604.07(e) regarding changes of name.

A change in the state of incorporation is a change of legal entity, creating a new party.

The death of a partner, or other change in the membership of a partnership, creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant state law permits this.

A merger of companies into a new company normally constitutes a change of legal entity.

Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present owner.  If there is a court order, a copy of the order should be submitted.

1604.07(e)   Changes of Name

A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §8 affidavit or declaration.  Therefore, if the owner records a change of name with the Assignment Recordation Branch and subsequently files the §8 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.  

However, if it is unclear from the records of the Assignment Recordation Branch whether the party who filed the affidavit or declaration is the owner of record, the owner must either record evidence of the change of name in the Assignment Recordation Branch or submit proof of the change of name.   See 37 C.F.R. §3.73(b) and TMEP §1604.07(b) .  For a corporation, this is done by recording or submitting a certificate of change of name issued by the Secretary of State (or other authorized body) of the state of incorporation.

See TMEP §1604.07(c) regarding issuance of the notice of acceptance of the affidavit or declaration in the name of the new owner.

1604.07(f)   Correction of Mistake in Setting Forth the Name of the Owner

If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out, the mistake can be corrected.   In re Atlanta Blue Print Co. , 19 USPQ2d 1078 (Comm’r Pats. 1990).  No deficiency surcharge is required in this situation.

See TMEP §1604.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.

See TMEP §1201.02(c) for examples of correctable and non-correctable errors.