A short primer from the TTAB on when one can correct the name of an incorrectly named registrant and when instead the application is void ab initio. In Key West Innkeeper’s Association, Inc. v. The Popular House, Inc., the application was filed in the name of “Carlson,Jody,E”, a corporation, then the applicant was changed during examination to “Key West Bed & Breakfast,” which was a fictitious name for Popular House, Inc. The TTAB squares it all away:
|If an application is filed in the name of a non-existent entity or under an applicant’s trade name, the application may be amended to correctly identify the applicant. See TMEP Sections 1201.02(c)(1) and 1201.02(c)(7). The evidence that applicant submitted during ex parte prosecution of its application for Registration No. 2946931 establishes that there is no genuine issue of material fact that there is no Florida corporation named “Carlson,Jody,E” (or Jody E. Carlson) and that Key West Bed and Breakfast is a fictitious name for Popular, which is registered with the Secretary of State of the State of Florida under which Popular does business. Accordingly, notwithstanding that such application was filed by a non-existent entity that has the same name as Popular’s president and that the identity of that applicant was then amended to the proper applicant’s trade name, i.e., another non-existent entity, there is no genuine issue of material fact that the application for Registration No. 2946931 is not void ab initio and that the applicant was merely misidentified in that application.
FN4. The circumstances in this case are distinguished from Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988), upon which petitioner relies in support of its claim that the application for Registration No. 2946931 is void ab initio. In Huang, the application at issue was filed by the mark owner’s president as an individual, two days after ownership of that had transferred to a newly formed corporation. Here, the application was filed by a non-existent Florida corporation that has the same name as Key West’s president. Because the identification of the applicant as a corporation with the same name as the applicant’s president created an inconsistency, allowance of the amendment to correct this inconsistency was appropriate. See TMEP Section 1201.02(c)(3).
Bonus question: The TTAB commented that “Indeed, based on the evidence that was submitted during ex parte prosecution of the application for Registration No. 2946931, the identity of the applicant for that registration could have, and at least arguably should have, been amended to The Popular House, Inc., during ex parte prosecution of that application.” Here’s the evidence: What do you think, if you were the examining attorney would you have caught it?
Key West Innkeeper’s Association, Inc. v. The Popular House, Inc., Cancellation No. 92048825 (TTAB March 17, 2010). It’s an old decision; not sure why Westlaw popped it out now.
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