1201.02(b)    Application Void if Wrong Party Identified as the Applicant

An application must be filed by the party who is the owner of (or has a bona fide intention to use in commerce) the mark on the application filing date. See TMEP §1201. When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. 37 C.F.R §2.7(d); TMEP §803.06.

If the application was filed by the party who is the owner or has a bona fide intention to use the mark in commerce, but there was a mistake in the manner in which the applicant’s name was set forth in the application, this may be corrected. 37 C.F.R §2.7(d); TMEP §803.06. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

Trademark Act Section 1(a) applications. An application based on use in commerce under 15 U.S.C. §1051(a)  must be filed by the party who owns the mark on the application filing date. 15 U.S.C §1051(a)(1). If the applicant does not own the mark on the application filing date, the application is void. 37 C.F.R. §2.71(d); Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017); Fuji Med. Instruments Mfg. Co. v. Am. Crocodile Int’l Grp., Inc., 2021 USPQ2d 831, at *25 (TTAB 2021) (citing Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988)); Conolty v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014); see Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *2 (TTAB 2020).

See TMEP §1104.10(b)(i) regarding ownership issues for an amendment to allege use and §1109.10 regarding ownership issues for a statement of use.

If the record indicates that the applicant is not the owner of the mark, the examining attorney should refuse registration on that ground. The statutory basis for this refusal is §1 of the Trademark Act, 15 U.S.C. §1051, and, where related company issues are relevant, §§5 and 45 of the Act, 15 U.S.C. §§1055, 1127. The examining attorney should not have the filing date cancelled or refund the application filing fee.

Trademark Act Section 1(b) and/or 44 applications. In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C. §§1051(b), 1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(1),  (b)(3)(B), 1126(d)(2), (e); 37 C.F.R §2.33(b)(2). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *9-10 (TTAB 2020); Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *4-5 (TTAB 2019); Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) (holding a §1(b) filed by an individual to be void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband), aff’d, 232 F.3d 907 (Fed. Cir. 2000); see also M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). However, the examining attorney will not inquire into the bona fides, or good faith, of an applicant’s asserted intention to use a mark in commerce during ex parte examination, unless there is evidence in the record clearly indicating that the applicant does not have a bona fide intention to use the mark in commerce. See TMEP §1101.

See TMEP §1201 regarding ownership of a §66(a) application.