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, or association. 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, 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. Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement ("Common 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" field appears in the Trademark Image Capture and Retrieval System ("TICRS") (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 http://www.wipo.int/export/sites/www/madrid/en/forms/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" field appears in TICRS, 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 "Nationality of Applicant" field does not appear in TICRS, 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 state where the sole proprietorship is organized, in addition to the name and national citizenship of the sole proprietor.
If the application specifically identifies the applicant as a sole proprietorship and indicates the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor, the USPTO will accept the characterization of the entity. 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 which 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 entity, 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 or country of organization (for 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:
"_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________ (name, legal entity, and citizenship of individual partner; or name, legal entity, and state or country of incorporation or organization of juristic partner)."
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 or country 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 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). 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 United States 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 United States 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), (3); 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.
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 trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. 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 United States 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 conservatorships and estates as follows:
The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a United States citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, United States citizens.
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 United States 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 of foreign applicants, acceptable terminology is not always the same as for United States 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 http://www.thecommonwealth.org/Internal/142227/members/.
"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 (10th ed. 2014). 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 United States 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.
The applicant must also specify the foreign country under the laws of which it is organized, but no additional information is required, even if additional information would be required for a United States 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 (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.
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 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 use the use of "Limited" or "Ltd." in a corporation name and §803.03(h) regarding limited liability companies.