When it comes to filing an extension request for a trademark application, it is important to ensure that you are the legitimate owner of the mark. This is complicated and usually requires detailed conversations with an experienced trademark attorney. According to 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89(a)(3), (b)(3), the party filing the extension request must be the owner of the application at the time of filing. This means that you must have the right to use or exercise control over the use of the mark.
If you are not the owner of record, your extension request should include either a statement that the assignment or other document of title has been recorded (or is in the process of being recorded) in the Assignment Recordation Branch of the USPTO, or other evidence that you are the owner of the application in accordance with 37 C.F.R. §3.71(d) and §3.73(b).
If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the USPTO will issue an Office action denying the request. If the party who filed the extension request was the owner at the time of filing, you may be able to submit evidence to establish the chain of title after the statutory filing period has expired, within the time provided in the Office action advising you of the denial.
To establish ownership, you must either record an assignment or other document of title with the Assignment Recordation Branch and state in your response to the Office action that the document has been recorded, or submit other evidence of ownership in the form of a document transferring ownership from one party to another or an affidavit or declaration under 37 C.F.R. §2.20 explaining that a valid transfer of legal title has occurred.
If an extension request is filed by the owner but there is a minor error in the way the owner’s name is listed, the mistake may be corrected by amendment. However, if the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is still time remaining in the statutory period for filing the extension request.
If you need to record an assignment or other document of title with the Assignment Recordation Branch, you can do so through the Electronic Trademark Assignment System at https://etas.uspto.gov. If you notify the USPTO during the processing of an extension request that an assignment or other document of title has been recorded and there is a clear chain of title, the USPTO will update the owner of record in the Trademark database.
It is important to carefully consider ownership requirements when filing an extension request for a trademark application. By understanding these requirements and following the necessary steps, you can ensure that your extension request is properly filed and has the best chance of being approved. Contact trademark attorney Matthew Tucker with Tucker Law today to discuss in more detail the ownership requirements for filing trademark applications.
