1109.10 Ownership
Review by the ITU/Divisional Unit
Section 1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), requires that "the applicant shall file ... a verified statement that the mark is in use in commerce ..." within six months of the notice of allowance, or within a previously granted extension of time to file a statement of use. The party filing the statement of use must be the owner of the mark at the time of filing. This is a statutory requirement that must be satisfied before the expiration of the deadline for filing the statement of use. In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).
If the party who files a statement of use was the owner of the mark at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. However, if the party who files a statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application is abandoned.
The question of whether the statement of use was filed by the owner is determined by the ITU/Divisional Unit. If a statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title. If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71(d), 3.73(b). To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
If the applicant does not establish that the party who filed the statement of use was the owner of the application at the time of filing, the ITU/Divisional Unit will abandon the application. The true owner may then file a petition to revive under 37 C.F.R. §2.66, accompanied by either a substitute statement of use or request for extension of time to file a statement of use, provided that granting the petition would not extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance. See TMEP §1714.01(b) regarding the requirements for petitions to revive.
If a statement of use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
Review by Examining Attorney
If an examining attorney determines, before taking an action in connection with the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney should return the statement of use to the ITU/Divisional Unit for appropriate action.
If the examining attorney determines, after taking an action regarding the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney must require the applicant to submit evidence to establish chain of title, as discussed above. If the party who filed the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration because no acceptable statement of use was filed within the time permitted, and inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney must issue a regular Office action with a six-month response clause. See TMEP §1109.16(b).