502.01 Establishing the Right to Take Action in Application or Registration
37 C.F.R. §3.73(b)
In order to request or take action in a patent or
trademark matter, the assignee must establish its ownership of the patent or trademark
property of paragraph (a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with the paper that
requests or takes the action. Ownership is established by submitting to the Office a
signed statement identifying the assignee, accompanied by either:
Documentary evidence of a chain of title from the
original owner to the assignee (e.g., copy of an executed assignment). For trademark
matters only, the documents submitted to establish ownership may be required to be
recorded pursuant to §3.11 in the assignment records of the Office as a condition to
permitting the assignee to take action in a matter pending before the Office. For
patent matters only, the submission of the documentary evidence must be accompanied by
a statement affirming that the documentary evidence of the chain of title from the
original owner to the assignee was or concurrently is being submitted for recordation
pursuant to §3.11; or
A statement specifying where documentary evidence of a
chain of title from the original owner to the assignee is recorded in the assignment
records of the Office (e.g., reel and frame number).
The submission establishing ownership must show that the
person signing the submission is a person authorized to act on behalf of the assignee
Including a statement that the person signing the
submission is authorized to act on behalf of the assignee; or
Being signed by a person having apparent authority to
sign on behalf of the assignee, e.g., an officer of the assignee.
Applications and Registrations Based on §§1 and 44 of the Trademark Act. In an application or registration based on §1 or §44 of the Trademark Act, when a party other than the owner of record attempts to take an action with respect to an application or registration (e.g., filing a response to an Office action, allegation of use under 15 U.S.C. §1051(c) or §1051(d), request for an extension of time to file a statement of use under 15 U.S.C. §1051(d)(2), affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”), or renewal application under 15 U.S.C. §1059 (“§9 renewal application”)), the party must establish ownership of the application or registration. To establish ownership, the new owner must either: (1) record the assignment (or other document affecting title) with the Assignment Recordation Branch of the USPTO, and notify the Trademark Operation that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1). The document(s) must show clear chain of title from the original owner to the party who is taking the action.
Section 66(a) Applications and Registered Extensions of Protection. 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. The new owner does not have the option of submitting documentary evidence of ownership pursuant to 37 C.F.R. §3.73(b). 37 C.F.R. §7.22
The IB will notify the USPTO of any changes in ownership, including changes in owner name, 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. See TMEP §501.07 for further information about 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. The document(s) must show clear chain of title from the original owner to the party who is taking the action. 37 C.F.R. §3.73(b)(1).
Part 3 of 37 C.F.R. does not apply to §66(a) applications and registered extensions of protection. 37 C.F.R. §7.22.