T.M.E.P. § 502.03
Issuance of New Certificate to Assignee of Registrant

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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502.03 Issuance of New Certificate to Assignee of Registrant

Registrations Under §1 and §44 of the Trademark Act

In registrations that issued based on applications under §1 or §44 of the Trademark Act, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner: (1) records the appropriate document (e.g., assignment document, change of name certificate) in the Assignment Services Division; (2) files a written request that a certificate of registration be issued in the new owner's name; and (3) pays the required fee (37 C.F.R. §§2.6(a)(8) and 3.41). The new owner must sign the request for a new certificate. 15 U.S.C. 1057(d); 37 C.F.R. §§2.171(a) and 3.85. The recorded document(s) must show a clear chain of title from the original registrant to the party requesting issuance of a new certificate.

Upon request and payment of the appropriate fee (see TMEP §111) , the Certification Division of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded in the Assignment Services Division.

See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of an affidavit or declaration under 15 U.S.C. 1058 in the name of the new owner of a registration.

Registered Extensions of Protection of International Registration to the United States

In a registered extension of protection of an international registration to the United States, the new owner must record the assignment, change of name, or other document affecting title with the IB. See TMEP §501.07 regarding assignment of registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes in the International Register. The IB will notify the USPTO when the change of ownership is recorded in the International Register, and the USPTO will record the change in the Assignment Database and update the ownership field in TRAM. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. The recorded document(s) must show a clear chain of title from the original owner to the party requesting issuance of a new certificate.

The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner: (1) records the appropriate document (e.g., assignment document, change of name certificate) with the IB; (2) files a written request that a certificate of registration be issued in the new owner's name; and (3) pays the required fee (37 C.F.R. 2.6(a)(8)). The new owner must sign the request for a new certificate. 15 U.S.C. 1057(d); 37 C.F.R. 2.171(a).

Upon request and payment of the appropriate fee (see TMEP §111) , the Certification Division of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. 7.22.