TMEP 1604.07(b): Establishing Ownership

This is the October 2015 Edition of the TMEP

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1604.07(b)    Establishing Ownership

When the affidavit or declaration is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit or declaration unless there is a clear chain of title from the original owner to the party who filed the affidavit or declaration. 37 C.F.R. §3.73(b); TMEP §502.01.

When the affidavit or declaration is filed, the Post Registration staff will check the records of the Assignment Recordation Branch of the USPTO, available at http://assignments.uspto.gov/assignments. If the records of the Assignment Recordation Branch show a clear chain of title in the party who filed the affidavit or declaration, no inquiry will be issued. The Post Registration staff will enter the change of ownership into the automated records of the Trademark Operation, if necessary.

If the records of the Assignment Recordation Branch do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration. To establish ownership, the party must: (1) record documents in the Assignment Recordation Branch of the USPTO that show each change of ownership, and include a statement in the response to the Office action that the documents have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit or declaration. 37 C.F.R. §3.73(b)(1); TMEP §502.01.

“Documentary evidence of a chain of title from the original owner to the assignee” (37 C.F.R. §3.73(b)(1)(i)) normally consists of the same type of documents that would be recorded in the Assignment Recordation Branch, e.g., assignment documents, certificates of merger, or certificates of change of name. In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.

The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired. If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.

See TMEP §1604.07(a) regarding an affidavit or declaration filed by a party who was not the owner of the registration at the time of filing.