Identification of Prior Registrations of Applicant

37 C.F.R.

Identification of prior registrations.  Prior

registrations of the same or similar marks owned by the applicant should be

identified in the application if the owner(s) last listed in Office records of the

prior registrations differs from the owner(s) listed in the

application.

Trademark Rule 2.36 states that prior registrations of the

same or similar marks owned by the applicant should be identified in the application if the

owner listed in the application differs from the owner last listed in the USPTO's records

for such prior registrations.  The rule does not precisely define when an applicant should

claim ownership of prior registration(s), and the examining attorney may exercise

discretion in invoking the rule.  The main purpose of the rule is to provide the examining

attorney with information necessary for proper examination.  The information does not have

to be given in any specific form.  The applicant’s claim of ownership of prior

registrations will be published in the

Trademark Official Gazette

and

included on the registration certificate.

Normally, identification of a registration is necessary

because the registration would, if not owned by the applicant, be a basis for refusal under

§2(d) of the Act,

15 U.S.C. §1052(d)

.  Occasionally, it is desirable to

ask an applicant to identify a particular registration as being owned by the applicant

merely to provide relevant information.

It is not necessary to assert ownership of expired or

cancelled registrations.  If the applicant wants to include a reference to a cancelled or

expired registration, the applicant should indicate that the applicant owns the

mark

disclosed in the cancelled or expired registration, because

technically one does not “own” a registration that is not in force and effect.  Claims of

ownership of pending applications, expired or cancelled registrations, and registrations

that are unrelated to an application will not be published

to a cancelled or

expired registration, the applicant should indicate that the applicant owns the

mark

disclosed in the cancelled or expired registration, because

technically one does not “own” a registration that is not in force and effect.  Claims of

ownership of pending applications, expired or cancelled registrations, and registrations

that are unrelated to an application will not be published.

Before approving an application that includes a claim of

ownership of prior registrations for publication or registration, the examining attorney

must ensure that the registrations are active.  If a registration is not active, the claim

of ownership should not be published.

All information in the “Prior Registration” field in the

application record in the Trademark database will automatically be published in the

Trademark Official Gazette

and included on the certificate of

registration.  Accordingly, when an examining attorney determines that a claim of ownership

of a prior registration should not be published (e.g., because the registration is no

longer active or is irrelevant to the registrability of the mark in the subject

application), the examining attorney must ensure that the claim of ownership is deleted

from the Trademark database, and enter a Note to the File (also referred to as a Public

Note or Notation to File) in the record indicating that the claim has been deleted.  The

document containing the information deleted from the Trademark database will remain of

record for informational purposes.  See

TMEP

§817

regarding preparation of an application for publication or

issuance.

If the applicant owns numerous prior registrations for the

same or similar marks, in which the owner(s) last listed in the USPTO's records differs

from the owner(s) listed in the application, the applicant should identify all such prior

registrations in the application. The applicant should enter the prior registration numbers

directly into the form

n of an application for publication or

issuance.

If the applicant owns numerous prior registrations for the

same or similar marks, in which the owner(s) last listed in the USPTO's records differs

from the owner(s) listed in the application, the applicant should identify all such prior

registrations in the application. The applicant should enter the prior registration numbers

directly into the form. The database will indicate “and others” if the applicant indicates

ownership of additional prior registrations that were not entered directly into the form.

In such case, the examining attorney must ensure that the claim of ownership identifies the

two or three most relevant registration numbers.

Section 1 and/or 44 Electronic Applications Filed on

or after January 18, 2025

. To meet the base application requirements, if the

applicant owns one or more registrations for the same mark, and the last listed owner(s) of

the prior registration(s) differs from the owner of the application, the initial

application must include a claim of ownership of the registration(s).

37 C.F.R. §2.22(a)(17)

. If this information is not

included in the initial application, the applicant must pay an insufficient information fee

per class.

37 C.F.R. §2.22(b)

.

See

TMEP §819.02(l)

for

further information. See

TMEP §819.06(b)

for

information about requiring the insufficient information fee for TEAS Plus applications

filed before January 18, 2025.