T.M.E.P. § 502.02
Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant's Ne
Executive summary:
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502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant's New Name
502.02(a) Applications Under §1 and §44 of the Trademark Act
37 C.F.R. 3.85. Issue of registration to assignee. The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.
Document Must Be Recorded With Assignment Services Division. In an application under §1 or §44 of the Trademark Act, an assignee must record the assignment, change of name, or other document affecting title with the Assignment Services Division of the USPTO to obtain a certificate of registration in the name of the assignee. 37 C.F.R. 3.85. However, the registration will not issue in the name of the new owner unless the ownership field in the Trademark Database (i.e., TRAM and TARR) is updated to reflect the recorded assignment prior to approval of the mark for publication (or registration on the Supplemental Register) in an application based on 1(a) or §44, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).
For some documents recorded on or after November 2, 2003, recording a document with the Assignment Services Division will automatically update ownership in TRAM, even if the new owner does not notify the Trademark Operation that the document has been recorded. See TMEP §§504 and 504.01 regarding the circumstances in which the Trademark Database will be updated automatically upon recordation of a document affecting title. In all other cases, a written request for issuance in the new name is required.
Under 37 C.F.R. 3.85, a new owner bears the burden of recording and notifying appropriate Office personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary. Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §§504 and 504.01 , or if there is insufficient time for the Assignment Services Division to process a recently recorded document for automatic updating (see TMEP §504.02) , the new owner must file a written request that the certificate issue in the name of the new owner. The new owner can search the Assignment Services Division's database on the USPTO website at http://assignments.uspto.gov/assignments to determine whether the assignment has been recorded, and can check the TARR database at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect the change of ownership. The TARR database contains the same information as TRAM.
A request that a registration issue in a new name should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee's address, and set forth the assignee's citizenship or state (or country) of incorporation or organization. If the assignee is a partnership or joint venture, the request should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney's handling of an application in which the mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the Assignment Services Division but is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
Clear Chain of Title Required. A new owner's request that a registration issue in a new name will not be granted unless documents recorded in the Assignment Services Division show a clear chain of title from the original applicant to the party requesting the change. The examining attorney should check the Assignment Services Division's Database ("Assignment Database") on the USPTO website at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title. If the Assignment Database shows a clear chain of title, the examining attorney should ensure that the TRAM database is updated, if necessary. If the Assignment Database does not show a clear chain of title, the examining attorney should issue an Office action advising applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If the applicant does not record the necessary documents, the registration will issue in the name of the party who has a clear chain of title according to the Assignment Database.
Time for Recordation and Filing of Request for Issuance in Name of New Owner. To ensure that the registration issues in the name of the new owner, the new owner should record the assignment before the mark is approved for publication (or registration on the Supplemental Register) in an application based on 15 U.S.C. 1051(a) or §1126, or prior to acceptance of a statement of use in an application based on 15 U.S.C. 1051(b). The USPTO cannot ensure that a request to issue the certificate in a new name filed after the mark has been approved for publication or registration will be processed in time for the registration to issue in the name of the new owner.
If, before a mark is approved for publication or registration, an applicant has filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. 1057(g), 37 C.F.R. 2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.
502.02(b) Applications Under §66(a) of the Trademark Act
In an application under §66(a) of the Trademark Act, a new owner must record any assignment, change of name, or other document affecting title with the IB. The document(s) must show a clear chain of title from the original owner to the party who is taking the action. See TMEP §501.07 regarding assignment of §66(a) applications, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes with the IB. The IB will notify the USPTO when the change of ownership is recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the ownership field in the Trademark Database. A new owner can check the TARR database at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect a change in ownership that has been recorded with the IB.
If the Trademark Database has not been updated, before the mark is approved for publication the new owner/assignee should file a written request that the registration issue in the name of the new owner/assignee. The request that a registration issue in a new name should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) with the IB, and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee's address, and set forth the assignee's citizenship or state (or country) of incorporation or organization. If the assignee is a partnership or joint venture, the request should set forth the names, legal entities, and national citizenship (or state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney's handling of an application after a mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the IB but is not yet recorded, and the application is in condition to be approved for publication, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
If, before a mark is approved for publication, an applicant has filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. 1057(g), 37 C.F.R. 2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error.
502.02(c) Examining Attorney's Action Regarding Assignment
If, prior to approval for publication for opposition or registration on the Supplemental Register, or prior to acceptance of a statement of use in an application under 15 U.S.C. 1051(b), the applicant advises the examining attorney or the examining attorney learns through some other source that an assignment has been recorded, the examining attorney should check the Assignment Database at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title, and should ensure that the TRAM database is updated before approving the mark for publication or registration.
In general, the examining attorney should only issue an Office action questioning whether an assignment has occurred if an entity attempts to take action with respect to the application, and Office records show ownership in another party. In this situation, the assignee must establish entitlement to take the action, either by recordation of an assignment, or submission of proof of the assignment. 37 C.F.R. 3.73(b); TMEP §502.01.
During initial examination, the examining attorney should not suspend action or delay issuance of a final action to await recordation of a document. However, if the applicant submits a request indicating that the relevant document has been submitted for recordation and the application is in condition to be approved for publication for opposition or registration on the Supplemental Register, the examining attorney should withhold approval for publication or registration until the document has been recorded and the information regarding the assignment or the change of name has been entered into TRAM. Likewise, during examination of the statement of use in an application under 15 U.S.C. 1051(b), the examining attorney should withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant's new name has been entered in TRAM. If the application is in condition to be approved for publication or registration, the examining attorney should suspend action pending the recordation of the document and the entry of the information into the application record and in TRAM. See TMEP §§716 et seq. regarding suspension.