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, whether the mark is for a trademark or a service mark, or whether registration is sought on the Principal Register or on the Supplemental Register.
See TMEP Chapter 700 regarding the procedure for examining applications in general, and Chapter 1300 regarding the examination of applications for service marks and examination of applications and application requirements for collective and certification marks.
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 §§1401–1401.14 for additional information about classification.
A combined or multiple-class application is an application to register the same mark for goods, services, and/or a collective membership organization in multiple classes in a single application. See 37 C.F.R. §2.86(a), (b). In a combined or multiple-class application, an applicant must pay a filing fee for each class. 37 C.F.R. §2.86(a)(2), (b)(2). The class numbers and corresponding goods or services must be listed separately, from the lowest to the highest number.
See TMEP §§1403–1403.06 for more information regarding combined or multiple-class applications.
The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051–1072). 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 does not specify a register, the United States Patent and Trademark Office (USPTO) will presume that the applicant seeks registration on the Principal 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. §§1091–1096, provide for registration on the Supplemental Register. This is a continuation of the register provided for in the Act of March 19, 1920. See 15 U.S.C. §1091(a). 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 Prods. 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).
See TMEP §§815–815.04 and 816 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), 2.75(c).
The USPTO requires that applicants filing applications under §1 or §44 of the Trademark Act use the Trademark Electronic Application System (TEAS), available at https://teas.uspto.gov. 37 C.F.R. §2.21(a). The two application filing options are as follows:
The current application filing fee amounts are available online at https://www.uspto.gov/trademark/trademark-fee-information.
In limited circumstances, an applicant may file a paper application at the highest per class filing fee set forth in 37 C.F.R. §2.6(a)(1)(i). See TMEP §301.01 regarding the limited exceptions when paper submissions may be permitted. See TMEP §§819–819.04 regarding TEAS Plus applications .
Section 66(a) applications. Applications under §66(a) of the Trademark Act are sent to the USPTO electronically from the International Bureau of the World Intellectual Property Organization (IB).
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 has a bona fide intention to use the mark in commerce.15 U.S.C §1051(a)(1), (b)(1). 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 §§1201–1201.07(b)(iv) regarding ownership, and TMEP §§501 and 502–502.03 regarding assignment of marks and changes of ownership.
If an applicant is not the owner of the mark (or does not have a bona fide intent to use the mark in commerce) 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); TMEP §803.06.
Applicants may be natural persons or juristic persons. See 15 U.S.C §1127. Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organizations capable of suing and being sued in a court of law. Id. 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 In re Mohawk Air Servs. Inc., 196 USPQ 851, 854 (TTAB 1977) ; NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975); In re U.S. Dep't of the Interior, 142 USPQ 506, 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, U.S. 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 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).
The name of the applicant should be set out in its correct legal form. See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2). For example, a corporate applicant should be identified by the name set forth in the articles of incorporation. 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 and indicate the name of the trust, if any. See TMEP §803.03(e) regarding the proper format for identifying trusts, conservatorships, and estates.
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 published in the Trademark Official Gazette and included on the certificate of registration. If an applicant gives the assumed name designation in full, the abbreviation will automatically be used for printing purposes.
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. See 37 C.F.R. §2.32(a)(2).
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 included 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 owner" in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a), 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 type, and TMEP §§803.06 and 1201.02(c) regarding USPTO policies regarding correction of an applicant’s name and entity type.
If a partnership, joint venture, or other "firm" has been organized under a particular business name, the application should be filed in that name. See 37 C.F.R. §2.32(a)(2). 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.
If the applicant is a corporation, the official corporate name must be set out as the applicant’s name. See 37 C.F.R. §2.32(a)(2). 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 included 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 included on the registration certificate.
Associations should be identified by the full, official name of the association. See 37 C.F.R. §2.32(a)(2).
See TMEP §803.03(c) for information about identifying a corporation or association as a legal entity.
Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, for example, partnership, joint venture, corporation, or association. 37 C.F.R. §2.32(a)(3)(i). 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 an entity that, under the laws of a foreign country, is equivalent or analogous to a corporation or association in the United States. See TMEP §803.03(i).)
Whether the USPTO will accept the identification of an applicant’s entity depends on whether that entity is recognized under the laws of applicant’s place 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 owner" in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a), 804.04), an explanation is usually not necessary when 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.
Individual. For an individual applicant, 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(a).
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. Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs.), Rules 9(4)(a)(i), 9(4)(b)(i) (2013). 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/Transferee/Holder" 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 https://www.wipo.int/export/sites/www/madrid/en/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/Transferee/Holder" field appears in TICRS, the examining attorney may enter the relevant information into the Trademark database, or ask the LIE to enter it. No inquiry as to the applicant’s entity or citizenship is necessary. If the name of the applicant indicates that applicant is an individual and the "Nationality of Applicant/Transferee/Holder" 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 of organization of the sole proprietorship, and the name and national citizenship of the sole proprietor. 37 C.F.R. §2.32(a)(3)(v).
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. Id. 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 that 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.
After setting forth the applicant’s name and legal entity type, 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 of incorporation or organization (for domestic businesses), of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §2.32(a)(3)(iii)-(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 for domestic partnerships or joint ventures:
"_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________ (name, legal entity, and citizenship of individual partner or active member; or name, legal entity, and state of incorporation or organization of juristic partner or active member)."
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 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 in domestic partnerships (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.
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.
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). 37 C.F.R. §2.32(a)(3)(i)-(ii). 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. Note that most states allow corporations to include the terms "Limited" or "Ltd." as part of the name of the corporation. Therefore, if the applicant’s name includes either term, and the applicant identifies its entity as a "corporation," no inquiry regarding the entity is required.
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 designation or description "association/associazione" for the country specified by the applicant appears 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 of these statements is not required.
Company. The term "company" is indefinite for describing a U.S. 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 U.S. 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.
An application may be filed in the names of joint applicants or joint owners. Ex parte Pac. Intermountain Express Co., 111 USPQ 187, 187 (Comm’r Pats. 1956); Ex parte Taylor, 18 USPQ 292, 293 (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. See Cent. Garden & Pet Co. v. Doskocil Mfg., Co., 108 USPQ2d 1134, 1148 n.25 (TTAB 2013) . 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), (a)(3)(i); TMEP §§803.02, 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.
In a §66(a) application, if the application record includes incomplete joint applicant information, such as showing more than one owner listed in the owner name field, the examining attorney must require the applicant to clarify whether the application is owned by joint applicants or a partnership. However, the USPTO cannot accept any changes to owner name and address information in a §66(a) application from the applicant. The applicant must submit these changes to the International Bureau (IB). See Regs. Rule 25; TMEP §1906.01(c). The applicant should request suspension of the application pending receipt of the updated information from the IB in a timely filed response to the Office action and must support the request with a copy of the filing submitted to the IB.
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), 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.
If a domestic trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. 37 C.F.R. §2.32(a)(2)-(a)(3)(i). Thus, the examining attorney must 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 U.S. 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. If there are more than ten individual trustees, the applicant need list only the first ten trustees.
The same format generally applies to domestic conservatorships and estates as follows:
The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a U.S. citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, U.S. citizens.
If a foreign trust in a §1 or §44 application is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. 37 C.F.R. §2.32(a)(2)-(a)(3)(i). However, the name(s) and citizenship(s) of the trustee(s) does not need to be listed because the USPTO does not track the varying legal effects of trustee status in foreign countries. See TMEP §803.03(i). Thus, the examining attorney must require that the trust’s application be captioned as follows:
The Trustees of the XYZ Trust, a Canadian trust.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. Then the foreign country under whose laws the trust exists must be set forth.
The same format generally applies to foreign conservatorships and estates in §1 and §44 applications:
The Conservator of Mary Jones, a Hungarian conservatorship.
The Executors of the John Smith estate, a Canadian estate.
Section 66(a) applications. In a §66(a) application, if the application record includes complete ownership information for a foreign trust, conservatorship, or estate that does not conform to the standard format, such as omitting "Trustees of" in the owner name field, the examining attorney should not require the applicant to provide correctly formatted owner name information.
The USPTO cannot accept any changes to owner name and address information in a §66(a) application from the applicant. The applicant must submit these changes to the International Bureau (IB). See Regs. Rule 25; TMEP §1906.01(c). The applicant should request suspension of the application pending receipt of the updated information from the IB in a timely filed response to the Office action and must support the request with a copy of the filing submitted to the IB.
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 or foreign country of incorporation or organization) of the individual trustees, must also be set forth. Accordingly, the examining attorney must 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 U.S. 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.
