1613.07 Ownership and Who May File §71 Affidavit or Declaration

1613.07(a) Affidavit or Declaration Must Be Filed by Holder

The affidavit or declaration of use or excusable nonuse must be filed by the holder of the international registration. Filing by the holder is a minimum requirement that must be met before the expiration of the deadlines set forth in §71(a) of the Act, 15 U.S.C. §1141k(a), (i.e., during the sixth year after the date of registration in the United States, or within the year before the end of every ten-year period after the date of registration in the United States), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. §§7.36(b), 7.37(a)(1).

If it is unclear whether the party who filed the affidavit or declaration is the present holder, the Post Registration staff will issue an Office action requiring the party to establish its ownership. See TMEP §1613.07(b).

If the affidavit or declaration was not filed in the name of the holder of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true holder may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §7.6, and, if applicable, a specimen of use for each class. If a new affidavit or declaration is filed during the grace period, the holder must include the grace period surcharge per class with the new affidavit or declaration. If a correction is submitted, the holder must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2); TMEP §1613.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2).

If the affidavit or declaration was not filed in the name of the holder of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time. 15 U.S.C. §1141k(c). The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected. The true holder may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge. 37 C.F.R. §7.6(a)(8). If a correction is submitted, the holder must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2); TMEP §1613.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2).

See also TMEP §1613.07(e) regarding mistakes in setting forth the name of the holder.

1613.07(b) Establishing Ownership

When the affidavit or declaration is filed by someone other than the original holder of the registration, the USPTO cannot accept the affidavit or declaration unless there is clear chain of title from the original holder to the party who filed the affidavit or declaration. TMEP §502.01.

If USPTO records do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration. Ownership can be established by recording the appropriate documents with the International Bureau of the World Intellectual Property Organization (IB). 37 C.F.R. §7.22; TMEP §1904.06. Actual evidence of a chain of title cannot be submitted to the USPTO to establish ownership of an extension of protection.

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO. The USPTO will record only those notifications received from the IB. The IB will notify the USPTO of any changes of the name of the holder or in ownership of the international registration recorded in the International Register, and the USPTO will automatically update the Trademark database to reflect the change(s). TMEP §§501.07, 1904.06.

The holder should notify the Post Registration staff when Office records indicate that the change in the name or ownership has been received from the IB. The USPTO cannot recognize the party who filed the §71 affidavit or declaration as the current holder until notification is received from the IB that a change in name or ownership has been recorded. Therefore, the holder may wish to contact the IB at https://www.wipo.int/madrid/en/index.html#contact regarding the recordation of the appropriate documents. Additionally, a new holder can check TSDR to determine whether the Trademark database has been updated to reflect all changes received from the IB. See TMEP §1613.07(a) regarding an affidavit or declaration filed by a party who was not the holder of the registration at the time of filing.

1613.07(c) Changes of Legal Entity

The procedures for establishing ownership, as discussed in TMEP §1613.07(b), also apply to changes of name and changes of legal entity. See TMEP §1613.07(d) regarding changes of name.

A change in the country or other jurisdiction of incorporation is a change of legal entity, creating a new party.

The death of a partner, or other change in the membership of a partnership, normally creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant law permits this.

A merger of companies into a new company normally constitutes a change of legal entity.

Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present holder. If there is a court order, a copy of the order should be submitted.

1613.07(d) Changes of Name

A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §71 affidavit or declaration. Therefore, if the holder records a change of name with the IB and subsequently files the §71 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.

However, if it is unclear from USPTO records whether the party who filed the affidavit or declaration is the holder of record, the holder must record appropriate documentation of the change of name with the IB. See37 C.F.R. §7.22; TMEP §1613.07(b). Actual evidence cannot be submitted to the USPTO to establish ownership of an extension of protection.

1613.07(e) Correction of Mistake in Setting Forth the Name of the Holder

If the affidavit or declaration was filed by the holder of the registration, but there is a mistake in the manner in which the name of the holder is set out in the affidavit or declaration, the mistake can be corrected. See In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats. 1990). No deficiency surcharge is required in this situation.

See TMEP §1613.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.

See TMEP §1201.02(c) for examples of correctable and non-correctable errors.