Ownership of Mark

Under §1(a)(1) of the Trademark Act,

15 U.S.C.

§1051(a)(1)

, a trademark or service mark application based on use

in commerce must be filed by the owner of the mark. A §1(a) application must include a

verified statement that the applicant believes the applicant is the owner of the mark

sought to be registered.

15 U.S.C.

§1051(a)(3)(A)

;

37 C.F.R.

§2.33(b)(1)

. An application that is not filed by the owner is

void.

See

TMEP §1201.02(b)

.

A trademark or service mark application under §1(b) or §44

of the Act,

15 U.S.C. §§1051(b)

,

1126

, must be filed by a party who has a bona fide intention to

use the mark in commerce as of the application filing date and include a verified

statement to that effect.

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 is not

the person with a bona fide intention to use the mark in commerce, the application is

void.

See

TMEP §§1008

,

1201.02(b)

.

In a §1(b) application, before the mark can be registered,

the applicant must file an amendment to allege use under

15 U.S.C.

§1051(c)

(

see

TMEP

§§1104-1104.11

) or a statement of use under

15 U.S.C.

§1051(d)

(

see

TMEP

§§1109-1109.18

) which states that the applicant is the owner

of the mark.

15 U.S.C. §1051(b)

;

37 C.F.R.

§§2.76(b)(1)(i)

,

2.88(b)(1)(i)

. 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.

In a §44 application, the applicant must be the owner of the

foreign application or registration on which the U.S. application is based as of the

filing date of the U.S. application.

See

TMEP

§1005

.

An application under §66(a) of the Trademark Act (i.e., a

request for extension of protection of an international registration to the United

States under the Madrid Protocol), must be filed by the holder of the international

registration.

15 U.S.C. §1141e(a)

;

37 C.F.R.

§7.25

ion or registration on which the U.S. application is based as of the

filing date of the U.S. application.

See

TMEP

§1005

.

An application under §66(a) of the Trademark Act (i.e., a

request for extension of protection of an international registration to the United

States under the Madrid Protocol), must be filed by the holder of the international

registration.

15 U.S.C. §1141e(a)

;

37 C.F.R.

§7.25

. 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.

§1141f(a)

;

37 C.F.R.

§2.33(e)(1)

. The verified statement in a §66(a) application for a

trademark or service mark is part of the international registration on file at the

International Bureau of the World Intellectual Property Organization (IB). The IB will

have established that the international registration includes this verified statement

before it sends the request for extension of protection to the U.S. Patent and Trademark

Office (USPTO).

See

TMEP

§804.05

. The request for extension of protection remains part

of the international registration, and ownership is determined by the IB. See

TMEP

§501.07

regarding assignment of §66(a) applications.

The provisions discussed above also apply to collective

and certification marks with the caveat that the owner of such marks does not use the

mark or have a bona fide intention to do so, but rather exercises control over its use

by members/authorized users or has a bona fide intention, and is entitled, to exercise

such control over the use by members/authorized users.

See

15

U.S.C. §§1053

,

1054

;

TMEP §§1303.02(a)

,

1304.03(a)

,

1306.01(a)

.