TMEP 502.01: Establishing the Right to Take Action in Application or Registration

This is the October 2015 Edition of the TMEP

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502.01    Establishing the Right to Take Action in Application or Registration

37 C.F.R. §3.73(b)

  • (1) 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:
  • (i) 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
  • (ii) 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).
  • (2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
  • (i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
  • (ii) 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.

See 37 C.F.R. §3.85 and TMEP §§502.02(a) and 502.03 regarding issuance of a certificate of registration in the name of a new owner.

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.