Correcting Errors in How the Applicant Is Identified

If the party applying to register the mark is, in

fact, the owner of the mark, but there is a mistake in the manner in which the

name of the applicant is set out in the application, the mistake may be

corrected by amendment.

U.S. Pioneer Elec. Corp. v. Evans Mktg.,

Inc.

, 183 USPQ 613 (Comm’r Pats. 1974). However, the application

may

not

be amended to designate another entity as the

applicant.

37 C.F.R. §2.71(d)

;

TMEP

§803.06

. An application filed in the name of the

wrong party is void and cannot be corrected by amendment.

37 C.F.R.

§2.71(d)

;

see

Huang v. Tzu Wei Chen Food Co.,

849 F.2d 1458, 7 USPQ2d 1335

(Fed. Cir. 1988);

Great Seats, Ltd. v. Great Seats,

Inc.

, 84 USPQ2d 1235, 1244

(TTAB 2007);

In re Tong Yang Cement Corp

., 19 USPQ2d 1689

(TTAB 1991).

Correctable Errors

. The following are examples of correctable

errors in identifying the applicant:

(1)

Trade Name Set Forth as Applicant

. If the applicant

identifies itself by a name under which it does business, which is not a

legal entity, then amendment to state the applicant’s correct legal name

is permitted.

Cf.

In re Atl. Blue Print Co.

, 19 USPQ2d 1078 (Comm'r

Pats 1990) (finding that Post Registration staff erred in refusing to

allow amendment of affidavit under

15

U.S.C. §1058

to show registrant’s corporate name

rather than registrant’s trade name).

(2)

Operating Division Identified as Applicant

. If the

applicant mistakenly names an operating division, which by definition is

not a legal entity, as the owner, then the applicant’s name may be

amended.

See

TMEP

§1201.02(d)

.

(3)

Minor Clerical Error

. Minor clerical errors such as

the mistaken addition or omission of "The" or "Inc." in the applicant’s

name may be corrected by amendment, as long as this does not result in a

change of entity. However, change of a significant portion of the

applicant’s name is not considered a minor clerical error.

e owner, then the applicant’s name may be

amended.

See

TMEP

§1201.02(d)

.

(3)

Minor Clerical Error

. Minor clerical errors such as

the mistaken addition or omission of "The" or "Inc." in the applicant’s

name may be corrected by amendment, as long as this does not result in a

change of entity. However, change of a significant portion of the

applicant’s name is not considered a minor clerical error.

(4)

Inconsistency in Original Application as to Owner Name or

Entity

. If the original application reflects an

inconsistency between the owner name and the entity type, for example,

an individual and a corporation are each identified as the owner in

different places in the application, the application may be amended to

clarify the inconsistency.

Example: Inconsistency Between Owner Section and Entity

Section of Electronic Form

. If the information in the

"owner section" of an application form filed in the trademark

electronic filing system is inconsistent with the information in the

"entity section" of the form, the inconsistency can be corrected,

for example, if an individual is identified as the owner and a

corporation is listed as the entity, the application may be amended

to indicate the proper applicant name/entity.

Signature of Verification by Different Entity Does Not

Create Inconsistency

. In view of the broad definition

of a "person properly authorized to sign on behalf of the

[applicant]" in

37 C.F.R. §2.193(e)(1)

(

see

TMEP §611.03(a)

), if the person signing

an application refers to a different entity, the USPTO will presume

that the person signing is an authorized signatory who meets the

requirements of

37 C.F.R. §2.193(e)(1)

, and will not issue

an inquiry regarding the inconsistency or question the signatory’s

authority to sign. If the applicant later requests correction to

identify the party who signed the verification as the owner, the

USPTO will not allow the amendment. For example, if the application

is filed in the name of "John Jones, individual U.S

signatory who meets the

requirements of

37 C.F.R. §2.193(e)(1)

, and will not issue

an inquiry regarding the inconsistency or question the signatory’s

authority to sign. If the applicant later requests correction to

identify the party who signed the verification as the owner, the

USPTO will not allow the amendment. For example, if the application

is filed in the name of "John Jones, individual U.S. citizen," the

verification is signed by "John Jones, President of ABC

Corporation," and the applicant later proposes to amend the

application to show ABC Corporation as the owner, the USPTO will not

allow the amendment, because there was no inconsistency in the

original application as to the owner name/entity.

(5)

Change of Name

. If the owner of a mark legally

changed its name before filing an application, but mistakenly lists its

former name on the application, the error may be corrected, because the

correct party filed, but merely identified itself incorrectly.

In re Techsonic Indus., Inc.

, 216 USPQ 619 (TTAB

1982).

(6)

Partners Doing Business as Partnership

. If an

applicant has been identified as "A and B, doing business as The AB

Company, a partnership," and the true owner is a partnership organized

under the name The AB Company and composed of A and B, the applicant’s

name should be amended to "The AB Company, a partnership composed of A

and B."

(7)

Non-Existent Entity.

If the party listed as the

applicant did not exist on the application filing date, the application

may be amended to correct the applicant’s name.

See

Accu Pers. Inc. v. Accustaff Inc.,

38 USPQ2d 1443

(TTAB 1996) (holding application not void ab initio where corporation

named as applicant technically did not exist on filing date, since four

companies who later merged acted as a single commercial enterprise when

filing the application);

Argo & Co. v

n the application filing date, the application

may be amended to correct the applicant’s name.

See

Accu Pers. Inc. v. Accustaff Inc.,

38 USPQ2d 1443

(TTAB 1996) (holding application not void ab initio where corporation

named as applicant technically did not exist on filing date, since four

companies who later merged acted as a single commercial enterprise when

filing the application);

Argo & Co. v. Springer

,

198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended

to name three individuals as joint applicants in place of an originally

named corporate applicant which was never legally incorporated, because

the individuals and non-existent corporation were found to be the same,

single commercial enterprise);

Pioneer Elecs.,

183

USPQ 613 (holding that applicant’s name may be corrected where the

application was mistakenly filed in the name of a fictitious and

non-existent party);

cf

.

Phat Scooters, Inc.

v. Fatbear Scooters

, LLC, 2023 USPQ2d 486, at *3 (TTAB

2023) (holding that the owner name could be corrected where the entity

named in the underlying application did not exist at the time of filing

but the same, single commercial enterprise had owned the mark,

application, and resulting registration the entire time).

Example 1

: If the applicant is identified as ABC

Company, a Delaware partnership, and the true owner is ABC LLC, a

Delaware limited liability company, the application may be amended

to correct the applicant’s name and entity if the applicant states

on the record that "ABC Company, a Delaware partnership, did not

exist as a legal entity on the application filing date."

Example 2

: If an applicant is identified as "ABC

Corporation, formerly known as XYZ, Inc.," and the correct entity is

"XYZ, Inc.," the applicant’s name may be amended to "XYZ, Inc." as

long as "ABC Corporation, formerly known as XYZ, Inc." was not a

different

existing

legal entity.

Cf.

Custom Computer Servs. Inc. v. Paychex Props. Inc.

,

337 F.3d 1334, 1337, 67 USPQ2d 1638, 1640 (Fed. Cir

date."

Example 2

: If an applicant is identified as "ABC

Corporation, formerly known as XYZ, Inc.," and the correct entity is

"XYZ, Inc.," the applicant’s name may be amended to "XYZ, Inc." as

long as "ABC Corporation, formerly known as XYZ, Inc." was not a

different

existing

legal entity.

Cf.

Custom Computer Servs. Inc. v. Paychex Props. Inc.

,

337 F.3d 1334, 1337, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003) (holding

that the term "mistake," within the context of the rule regarding

the misidentification of the person in whose name an extension of

time to file an opposition was requested, means a mistake in the

form of the potential opposer's name or its entity type and does not

encompass the recitation of a different existing legal entity that

is not in privity with the party that should have been named).

To correct an obvious mistake of this nature, a

verification or declaration is not normally necessary.

Non-Correctable Errors

. The following are examples of

non-correctable errors in identifying the applicant:

(1)

President of Corporation Files as Individual

. If the

president of a corporation is identified as the owner of the mark when

in fact the corporation owns the mark, and there is no inconsistency in

the original application between the owner name and the entity type

(such as a reference to a corporation in the entity section of the

application), the application is void as filed because the applicant is

not the owner of the mark.

(2)

Predecessor in Interest

. If an application is filed

in the name of entity A, when the mark was assigned to entity B before

the application filing date, the application is void as filed because

the applicant was not the owner of the mark at the time of filing.

Cf.

Huang

, 849 F.2d at 1458, 7 USPQ2d at 1335 (holding as

void an application filed by an individual two days after ownership of

the mark was transferred to a newly formed corporation).

filed

in the name of entity A, when the mark was assigned to entity B before

the application filing date, the application is void as filed because

the applicant was not the owner of the mark at the time of filing.

Cf.

Huang

, 849 F.2d at 1458, 7 USPQ2d at 1335 (holding as

void an application filed by an individual two days after ownership of

the mark was transferred to a newly formed corporation).

(3)

Joint Venturer Files

. If the application is filed in

the name of a joint venturer when the mark is owned by the joint

venture, and there is no inconsistency in the original application

between the owner name and the entity type (such as a reference to a

joint venture in the entity section of the application), the applicant’s

name cannot be amended.

Tong Yang Cement

, 19 USPQ2d

at 1689.

(4)

Sister Corporation

. If an application is filed in the

name of corporation A and a sister corporation (corporation B) owns the

mark, the application is void as filed, because the applicant is not the

owner of the mark.

Great Seats

, 84 USPQ2d at 1244

(holding §1(a) application void where the sole use and advertising of

the mark was made by a sister corporation who shared the same president,

controlling shareholder, and premises as the applicant).

(5)

Parent/Subsidiary

. If an application is filed in the

name of corporation A, a wholly owned subsidiary, and the parent

corporation (corporation B) owns the mark, the application is void as

filed because the applicant is not the owner of the mark. See

TMEP

§1201.03(b)

regarding wholly owned related

companies.

(6)

Joint Applicants

. If

an application owned by joint applicants is filed in the name of one of

the owners and another party who is not the joint owner, the application

is void as filed because the listed parties did not own the mark as

joint applicants.

Cf.

Am. Forests v. Sanders

, 54 USPQ2d 1860 (TTAB 1999)

(application filed in the name of an individual, when it was actually

owned by a partnership composed of the individual and her husband, was

void ab initio).