803 Applicant
803.01 Who May Apply
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).
803.02 Name of Applicant
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.
803.02(a) Individual
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.
803.02(b) Partnership, Joint Venture, or Other "Firm"
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.
803.02(c) Corporation and Association
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.
803.03 Legal Entity of Applicant
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, association, or sole proprietorship. 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.
803.03(a) Individual or Sole Proprietorship
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 application record (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 the application record, 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 the application record, 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 U.S. state or foreign country of organization of the sole proprietorship, and the name and national citizenship of the domestic or foreign 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 U.S. state or foreign country of organization of the sole proprietorship and the name and citizenship of the domestic or foreign 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.
803.03(b) Partnership, Joint Venture, or Other "Firm"
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.
803.03(c) Corporation, Association, Organization, and Company
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.
803.03(d) Joint Applicants
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.
803.03(e) Trusts, Conservatorships, and Estates
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.
803.03(e)(i) Business Trusts
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.
803.03(f) Governmental Bodies and Universities
It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis. The following are just a few examples of acceptable governmental entities:
Department of the Air Force, an agency of the United States.
Maryland State Lottery Agency, an agency of the State of Maryland.
City of Richmond, Virginia, a municipal corporation organized under the laws of the Commonwealth of Virginia.
These examples are not exhaustive of the entity designations that are acceptable.
The structure of educational institutions varies significantly. The following are examples of acceptable university entities:
Board of Regents, University of Texas System, a Texas governing body.
University of New Hampshire, a nonprofit corporation of New Hampshire.
Auburn University, State University, Alabama.
These examples are not exhaustive of the entity designations that are acceptable.
The designations "education institution" and "educational organization" are not acceptable. If the applicant uses either of these designations to identify the entity, the examining attorney must require the applicant to amend the entity designation to a legally recognized juristic entity.
803.03(g) Banking Institutions
The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. The following is a non-exhaustive listing of examples of acceptable descriptions of banking institutions:
First American Bank of Virginia, a Virginia corporation.
Pathway Financial, a federally chartered savings and loan association.
803.03(h) Limited Liability Companies
Most states recognize an entity commonly identified as a "limited liability company" or "LLC." The entity has attributes of both a corporation and a partnership. Therefore, the USPTO will accept "limited liability company" as an entity designation. The examining attorney may accept appropriate variations of this entity, with proof that the entity exists under the law of the relevant state. For example, some states recognize an entity identified as a "low-profit-limited-liability company" or "L3C," which combines the features of a for-profit LLC and a nonprofit organization.
If "LLC" or "L3C" appears in the applicant’s name, but the entity is listed as a corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation.
The applicant must indicate the state under whose laws the limited liability company is established. It is not necessary to list the "members" or owners of the limited liability company when identifying the entity.
See TMEP §611.06(g) regarding the proper party to sign a response to an Office action filed by a limited liability company that is not represented by an attorney.
Limited Liability Corporation. A business organization known as a "limited liability corporation" is currently not recognized in any jurisdiction. If an applicant’s entity type is identified as a limited liability corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation. If the applicant believes that it is a limited liability corporation, then the applicant must provide proof that such a legal entity exists under the appropriate state statute.
See TMEP §803.03(c) regarding use the use of "Limited" or "Ltd." in a corporation name and §803.03(k) regarding limited liability partnerships.
803.03(i) Common Terms Designating Entity of Foreign Applicants
In designating the legal entity type of foreign applicants, acceptable terminology is not always the same as for U.S. applicants. The word "corporation" as used in the United States is not necessarily equivalent to juristic entities of foreign countries; the word "company" is sometimes more accurate. If the applicant is from the United Kingdom or another Commonwealth country (e.g., Canada or Australia) and the term "company" (or the abbreviation "co.") is used, no inquiry is needed. "Limited company" is also acceptable, for example, in China, the Republic of Korea, and Commonwealth countries. There is a list of Commonwealth countries on the commonwealth website at https://thecommonwealth.org/our-member-countries.
"Limited corporation" is also an acceptable entity designation for a foreign applicant.
The designation Foreign Maritime Entity (FME) is not an acceptable business entity type. A "legal entity" is "[a] body, other than a natural person, that can function legally, sue or be sued, and make decisions through agents." Black’s Law Dictionary (11th ed. 2019). Here, the capacity to sue or be sued rests with the foreign entity that registers as a FME, as opposed to the FME itself. Therefore, the term FME does not identify a legal entity.
Appendix D of this manual lists common foreign designations, and their abbreviations, used by various foreign countries to identify legal commercial entities. The appendix also includes a description (Joint Stock Company, Cooperative Society, Trading Partnership, etc.) of the foreign designation and, in some cases, the equivalent U.S. entity. If a foreign designation, its abbreviation, or a description appears in the appendix, the examining attorney may accept any of those terms as the entity designation without further inquiry. The applicant may also choose to specify the legal entity by indicating the entity that would be its equivalent in the United States. However, if an applicant identifies itself by a name that includes a foreign entity designation in Appendix D (e.g., "Business SpA"), but provides a characterization of the entity that does not match the description (e.g., General Partnership), the examining attorney must clarify the nature of the applicant’s entity.
If a foreign entity designation, its abbreviation, or its description does not appear in Appendix D, the examining attorney must inquire further into the specific nature of the entity. The examining attorney may request a description of the nature of the foreign entity, if necessary.
For foreign entities, the applicant must also specify the foreign country under the laws of which it is organized. The applicant, however, generally is not required to provide other information even if additional information would be required for a U.S. entity of the same name. For example, it is not necessary to set forth the names and citizenship of the partners of a foreign partnership. 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. However, foreign sole proprietorships must indicate the foreign country of organization of the sole proprietorship and specify the name and national citizenship of the sole proprietor. See TMEP §803.03(a).
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select the entity type "Other" (rather than "Corporation," "Limited Liability Company," "Partnership," etc.), which will allow entry within the free-text field provided at "Specify Entity Type" of both the type of entity and the foreign province or geographical region under which it is organized (e.g., enter "corporation of Ontario" in the box labeled "If not listed above, please specify here:"). In the next section, "State or Country/Region/Jurisdiction/U.S. Territory Where Legally Organized," the country (e.g., "Canada") should then be selected from the pull-down menu.
803.03(j) Federally Recognized Indian Tribe
A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant’s entity.
803.03(k) Limited Liability Partnerships
Most states recognize an entity commonly identified as a "limited liability partnership" ("LLP"). An LLP is separate and distinct from a limited partnership, and is more closely associated with a limited liability company in that it has attributes of both a corporation and a partnership. Therefore, the USPTO will accept the entity designation "limited liability partnership." The examining attorney may accept appropriate variations of this entity (e.g., "limited liability limited partnership" or "LLLP"), with proof that the entity exists under the law of the relevant state.
The applicant must indicate the state under whose laws the limited liability partnership is established. It is not necessary to list the partners of the limited liability partnership when identifying the entity.
See TMEP §611.06(h) regarding the proper party to sign a response to an Office action filed by a limited liability partnership that is not represented by a qualified practitioner.
See also TMEP §803.03(c) regarding the use of "Limited" or "Ltd." in a corporation name and §803.03(h) regarding limited liability companies.
803.04 Citizenship of Applicant
An application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. 37 C.F.R. §2.32(a)(3)(i)-(ii). If ambiguous terms are used, the examining attorney must require the applicant to clarify the record by setting forth the citizenship with greater specificity. For example, the term "American" is ambiguous because it could refer to a citizen of North, South, or Central America. Therefore, "United States," "United States of America," or "U.S.A." is the appropriate citizenship designation for applicants who are citizens of the United States of America. However, terms such as "Brazilian," Colombian," and "Welsh" are acceptable citizenship designations because each refers to a specific country.
An individual applicant should set forth the country of which he or she is a citizen. Current citizenship information must be provided; a statement indicating that the applicant has applied for citizenship in any country is not relevant or acceptable. If an individual is not a citizen of any country, a statement to this effect is acceptable.
If an individual applicant asserts dual citizenship, the applicant must choose which citizenship will be published in the Trademark Official Gazette and included on the registration certificate. The USPTO will publish and include only one country of citizenship for each person in the Trademark Official Gazette and on the registration certificate, and the automated records of the USPTO will indicate only one country of citizenship for each person.
For a sole proprietorship, the application must set forth the U.S. state or foreign country of organization of the sole proprietorship and the name and citizenship of the domestic or foreign sole proprietor. 37 C.F.R. §2.32(a)(3)(v).
For a corporation, the application must set forth the U.S. state or foreign country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of "Other," which will allow entry within the free-text field provided at "Specify Entity Type" of both the type of entity and the foreign province or geographical region under which it is organized (e.g., "corporation of Ontario"). In the next section, "State or Country Where Legally Organized," the country (e.g., "Canada") should then be selected from the pull-down menu.
For an association, the application must set forth the U.S. state or foreign country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); see TMEP §803.03(c).
A partnership or other firm must set forth the U.S. state or foreign country under the laws of which the partnership is organized. 37 C.F.R. §2.32(a)(3)(ii). Domestic partnerships must also provide the name and citizenship information for each general partner in the partnership. 37 C.F.R. §2.32(a)(3)(iii). This requirement also applies to a partnership that is a general partner in a larger partnership. See TMEP §803.03(b) for the proper format for identifying a partnership. Given the varying legal effects of partnership status in foreign countries, the relevance of the name and citizenship information for each partner has not been established. Therefore, for foreign partnerships, it is not necessary to provide the names and citizenship of the partners. See TMEP §803.03(i) for further information about foreign applicant entities.
For joint applicants or a joint venture, the application should set forth the citizenship or U.S. state or foreign country of organization of each party. See 37 C.F.R. §2.32(a)(3)(i)-(ii). Domestic joint ventures must also provide the name and citizenship information for all active members of the joint venture. 37 C.F.R. §2.32(a)(3)(iv). See TMEP §803.03(b) for the proper format for identifying a joint venture.
Section 66(a) Applications. In an application for international registration, the international application does not require the applicant to provide the entity and citizenship information. Regs. Rules 9(4)(b)(i)–(ii). However, when the information is included, the IB forwards it to the USPTO as part of the §66(a) application.
If the applicant is an individual, that is, a natural person, he or she must indicate his or her name and the country of which he or she is a national. If provided in the §66(a) application, this information appears in the Trademark database in the "Nationality of Applicant/Transferee/Holder" field, and the 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, which can be found at https://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf . The examining attorney should enter the entity and citizenship into the Trademark database, or send a request to the LIE to have it entered. A separate statement that applicant is an individual will not appear in the application record, and the "Legal Nature" and "Legal Nature: Place Incorporated" fields will state "Not Provided." No inquiry as to the applicant’s entity or citizenship is necessary. The absence of the "Nationality of Applicant/Transferee/Holder" field means that the applicant is a juristic entity rather than an individual.
If the applicant is a juristic entity, the name, entity, and citizenship of the juristic entity is required. If provided in the §66(a) application, the entity and citizenship information appears in the "Legal Nature" and "Legal Nature: Place Incorporated" fields. If these fields state "Not Provided," the examining attorney must require the applicant to indicate its entity and citizenship.
Regardless of whether the applicant is an individual or a juristic entity, the examining attorney 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 applicant.
803.05 Domicile and Email Addresses of Applicant
The application must specify the applicant’s domicile and email addresses. 37 C.F.R. §2.32(a)(2); In re Chestek PLLC, 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement affirmed). Applicant must keep these addresses current and promptly update the USPTO when these addresses change.37 C.F.R §§2.23, 2.189. See TMEP §803.05(b) regarding certain filers that may be exempt from the requirement to provide an email address.
803.05(a) Domicile Address
Applicants must provide and keep current the address of their domicile. 37 C.F.R §§2.32(a)(2), 2.189; In re Chestek PLLC, 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement affirmed). An applicant’s domicile address is required for a complete application. 37 C.F.R §2.32(a)(2).
For a natural person, domicile is the permanent legal place of residence, which is the place the person resides and intends to be the person’s principal home. 37 C.F.R §2.2(o). For a juristic entity, domicile is the principal place of business, which is the entity’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled. 37 C.F.R §§2.2(o) -(p). See TMEP §601.01 regarding determining domicile.
An applicant’s domicile address will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R §§2.11(a), 11.1, 11.14(e); see TMEP §§601, 602. An applicant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R §2.11(a). An applicant whose domicile is within the United States or its territories may represent itself in prosecuting an application or may be represented by a qualified U.S. attorney. See TMEP §601 regarding representation requirements for mark owners based on domicile.
An applicant generally must provide its domicile street address. See 37 C.F.R §2.189; In re Chestek PLLC, 92 F.4th at 1113, 2024 USPQ2d 297, at *8. Domicile addresses should include the United States Postal Service ZIP code or its equivalent for addresses outside the United States. An address that does not identify an actual street address or that functions as a mail forwarding address generally may not serve as a domicile address. See TMEP §601.01(c) for more information.
The TEAS application forms include a dedicated field for the applicant’s domicile address and a separate field for the applicant’s mailing address. Only address information entered in the "Domicile Address" field on the TEAS form is hidden from public view. Therefore, if an applicant enters the same address in the TEAS form fields for its mailing address and its domicile address, that address will be publicly viewable.
For joint applicants, the application must set forth the domicile address for each party.
For a partnership, corporation, association, or other firm, only the domicile address of the business must be set forth and not the addresses of individual partners, officers, or members, unless the entity asserts it does not have a fixed physical address. See TMEP §601.01(c)(iv)(A) regarding the option for juristic entities asserting no fixed physical address to provide the name, title, and domicile address of a person with legal authority to bind the entity.
When necessary, the USPTO may require the applicant to furnish information or declarations to confirm the applicant's domicile address in order to determine if the applicant is subject to the requirement to be represented by a qualified U.S. attorney. 37 C.F.R §2.11(b). See TMEP §601.01(b) for more information.
803.05(b) Email Address
Applicants must provide and maintain a valid email address. See 37 C.F.R §§2.23(b), 2.32(a)(2). The applicant’s email address is a filing-date requirement and is required even if the applicant has appointed a qualified U.S. attorney, so that the USPTO can contact the applicant if representation ends. See 37 C.F.R §2.21(a)(1); TMEP §202.
The applicant may provide an email address of its choice, including an email specifically created for receiving USPTO correspondence. If the applicant is represented by a qualified U.S. attorney, the email address listed in the owner field may not be identical to the listed email address of its attorney.
The email address listed in the owner field for trademark applicants while represented by a qualified U.S. attorney will not be publicly viewable. The USPTO makes an effort to mask this field only as a courtesy to make it harder for the data to be scraped for solicitation or other purposes, not because the data is private. Only the email address of the attorney will always be publicly viewable, and the USPTO will use the attorney’s email address for correspondence. Owners should be aware that their email addresses may be made public at any time if and when their counsel is removed from a case for any reason, and are highly encouraged to use email addresses that they use only for USPTO trademark correspondence. All electronic filers are on notice that they have no expectation of privacy in the email addresses they use in trademark filings.
The email address listed in the owner field for trademark applicants who are not represented by a qualified U.S. attorney will be used by the USPTO for correspondence and will be publicly viewable as the correspondence email address. To avoid receiving unsolicited communications at a personal or business email address, applicants may wish to create an email address specifically for communication and correspondence related to their trademark filings at the USPTO.
For in-house counsel and attorneys representing themselves in a matter, the TEAS forms will require two different email addresses: one for the owner email address field and one for the attorney email address field. For technical reasons related to the TEAS forms, these addresses cannot be identical.
Section 66(a) applications. The requirement for an applicant to provide and maintain a valid email address also applies to applications filed under Trademark Act Section 66(a). 37 C.F.R §§2.23(b), 7.25(a). This is not a filing-date requirement for an initial Section 66(a) application, because these are transmitted to the USPTO by the International Bureau (IB) and generally do not include an email address for receiving USPTO correspondence. In addition, if a Section 66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. However, the applicant will be required to appoint an attorney authorized to practice before the USPTO and provide an email address in any subsequent submissions. See TMEP §601.01(a)regarding applicants with a non-U.S. domicile and §714.05 regarding the deadline within which all refusals and/or requirements must be notified to the IB.
Certain treaty filers exempt from email requirement. If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide the applicant’s email address does not apply. 37 C.F.R §§2.21(c), 2.23(c); see TMEP §301.02(c).
803.06 Applicant May Not Be Changed
While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth, an application cannot be amended to substitute another entity as the applicant. 37 C.F.R §2.71(d); TMEP §803.06. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant.
If the application was filed in the name of a party who had no basis for such party's assertion of ownership of the mark (or a bona fide intention to use the mark in commerce) as of the filing date, the application is void, and registration must be refused. 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); 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); Conolty v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014); TMEP §1201.02(b). The USPTO will not refund the application filing fee in such a case.
A void application filed in the name of a wrong party cannot be cured by amendment or assignment. See 37 C.F.R. §2.71(d); TMEP §1201.02(b). The true owner may file a new application (with a new filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, such party may file a new application (with a new filing fee) at that time.
See TMEP §803.01 regarding minor applicants and Chapter 500 and §1201.02(e) regarding the transfer of ownership from the true owner to another party after the filing date.