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.