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.