812 Identification of Prior Registrations of Applicant
37 C.F.R. §2.36
Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application.
Trademark Rule 2.36, 37 C.F.R. §2.36, states that prior registrations of the same or similar marks owned by the applicant should be identified in the application. The rule does not precisely define when an applicant should claim ownership of prior registration(s), and the examining attorney may exercise discretion in invoking the rule. The main purpose of the rule is to provide the examining attorney with information necessary for proper examination. The information does not have to be given in any specific form. The applicant’s claim of ownership of prior registrations will be printed in the Official Gazette and on the registration certificate.
Normally, identification of a registration is necessary because the registration would, if not owned by the applicant, be a basis for refusal under §2(d) of the Act, 15 U.S.C. §1052(d). Occasionally, it is desirable to ask an applicant to identify a particular registration as being owned by the applicant merely to provide relevant information.
It is not necessary to assert ownership of expired or cancelled registrations. If the applicant wants to include a reference to a cancelled or expired registration, the applicant should indicate that the applicant owns the mark disclosed in the cancelled or expired registration, because technically one does not "own" a registration that is not in force and effect. Claims of ownership of pending applications, expired or cancelled registrations, and registrations that are unrelated to an application will not be printed.
Before approving an application that includes a claim of ownership of prior registrations for publication or registration, the examining attorney must ensure that the registrations are active. If a registration is not active, the claim of ownership should not be printed.
All information in the "Prior Registration" field in the application record in the TRAM database will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, when an examining attorney determines that a claim of ownership of a prior registration should not be printed (e.g., because the registration is no longer active or is irrelevant to the registrability of the mark in the subject application), the examining attorney must ensure that the claim of ownership is deleted from the TRAM database, and enter a Note to the File in the record indicating that the claim has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.
If the applicant owns numerous prior registrations, it is not necessary to list them all. The applicant should specifically identify the two or three registration numbers that are most relevant (due to the similarity of the marks and/or relatedness of the goods or services), and then indicate that it owns other registrations as well, e.g., "the applicant is the owner of Reg. Nos. <specify the numbers> and others." If the applicant lists numerous prior registrations, the database will only show the first three registration numbers entered in the claim of ownership field and will automatically indicate "and others" as to any additional registration numbers. Therefore, the examining attorney must ensure that the claim of ownership identifies the two or three most relevant registration numbers.
In a TEAS Plus application, if the applicant owns one or more registrations for the same mark, the initial application must include a claim of ownership of the registration(s). If this information is not included in the initial application, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application. 37 C.F.R. §2.22(a)(19). See TMEP §819.01(p) for further information.
812.01 Proving Ownership of Prior Registrations
If an applicant includes a claim of ownership of a prior registration in the application as filed, the examining attorney should accept the claim without further proof of ownership and should not cite the registration for likelihood of confusion under §2(d) of the Act.
If the applicant does not assert ownership of a pertinent registration in the application when it is filed, but the records of the USPTO indicate that the registration is owned by the applicant, the examining attorney does not have to cite the registration for likelihood of confusion, but should call the registration to the applicant’s attention and ask the applicant to state that the applicant owns the registration, if accurate. If the request is made in an Office action, the examining attorney must include a copy of the registration. If there are no other issues necessitating issuance of an Office action, the examining attorney may call or e-mail the applicant. The applicant’s statement claiming ownership may be placed in the record through an examiner’s amendment.
If the TRAM database indicates that an assignment was filed, the examining attorney should check the automated records of the Assignment Recordation Branch of the USPTO to determine whether information contained in those records supports ownership of the registration in the applicant’s name.
Generally, the applicant has the burden of proving ownership of a registration. The USPTO’s automated search system may not reflect the recordation of changes of ownership in the Assignment Recordation Branch. See TMEP §§502 et seq. Therefore, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, it is possible that the registration may be cited against the current application under §2(d) because the records of the USPTO do not indicate that it is owned by the applicant. If so, the applicant must do one of the following: (1) state for the record that the documents have been recorded in the Assignment Recordation Branch for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a §66(a) registration; (2) submit copies of documents evidencing the chain of title; or (3) submit a statement, supported by an affidavit or declaration under 37 C.F.R. §2.20, that the applicant is the owner of the cited registration. This also applies to pending conflicting applications that are cited as a potential bar to registration.