TMEP 1613.07(b): Establishing Ownership

This is the October 2015 Edition of the TMEP

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1613.07(b)    Establishing Ownership

When the affidavit or declaration is filed by someone other than the original holder of the registration, the USPTO cannot accept the affidavit or declaration unless there is clear chain of title from the original holder to the party who filed the affidavit or declaration. TMEP §502.01.

If USPTO records 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. Ownership can be established by recording the appropriate documents with the International Bureau of the World Intellectual Property Organization (“IB”). 37 C.F.R. §7.22; TMEP §1904.06. Actual evidence of a chain of title cannot be submitted to the USPTO to establish ownership of an extension of protection.

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO. The USPTO will record only those notifications received from the IB. The IB will notify the USPTO of any changes of the name of the holder or in ownership of the international registration recorded in the International Register, and the USPTO will automatically update its database to reflect the change(s). TMEP §§501.07, 1904.06.

The holder should notify the Post Registration staff when Office records indicate that the change in the name or ownership has been received from the IB. The USPTO cannot recognize the party who filed the §71 affidavit or declaration as the current holder until notification is received from the IB that a change in name or ownership has been recorded. Therefore, the holder may wish to contact the IB at http://www.wipo.int/madrid/en/contact.html regarding the recordation of the appropriate documents. Additionally, a new holder can check TSDR to determine whether the Trademark database has been updated to reflect all changes received from the IB. See TMEP §1613.07(a) regarding an affidavit or declaration filed by a party who was not the holder of the registration at the time of filing.