TMEP 502: Establishing Ownership of Applications or Registrations

This is the October 2015 Edition of the TMEP

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502    Establishing Ownership of Applications or Registrations

37 C.F.R. §3.73(a) (Extract)

* * * The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

Section 1 or §44 Applications. In an application or registration based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, an assignee is not required to record the assignment in order to take an action with respect to an application or registration. However, an assignee must establish ownership in order to take action in an application or registration. 37 C.F.R. §3.73(b); TMEP §502.01. In addition, the assignee must record the assignment (or other document affecting title) with the Assignment Recordation Branch of the USPTO to obtain a certificate of registration in the name of the assignee. 37 C.F.R. §3.85; TMEP §§502.02(a) and 502.03. Moreover, it is advisable for an applicant or registrant to record the assignment to ensure that it is valid, under §10(a)(4) of the Trademark Act, 15 U.S.C. §1060, against subsequent purchasers for valuable consideration without notice. See TMEP §501.03.

Section 66(a) Applications. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration, or to obtain a certificate of registration in the name of a new owner. TMEP §§502.01, 502.02(b), and 502.03. See TMEP §501.07 regarding the assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.