TMEP 502.02(a): Applications Under §§1 and 44 of the Trademark Act

This is the October 2015 Edition of the TMEP

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502.02(a)    Applications Under §§1 and 44 of the Trademark Act

37 C.F.R. §3.85 Issue of registration to assignee.

The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.

Document Must Be Recorded with Assignment Recordation Branch. In an application under §1 or §44 of the Trademark Act, a new owner must record the assignment, change of name, or other document affecting title with the Assignment Recordation Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name). 37 C.F.R. §3.85. However, the registration will not issue in the name of the new owner, unless the ownership field in the Trademark database is updated to reflect the recorded assignment prior to approval of the mark for publication or registration on the Supplemental Register in an application based on §1(a) or §44, 15 U.S.C. §1051(a) or §1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).

Under 37 C.F.R. §3.85, a new owner bears the burden of recording and notifying appropriate USPTO personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary. However, for some documents recorded on or after November 2, 2003, recording a document with the Assignment Recordation Branch will automatically update ownership in the Trademark database even if the new owner does not notify the Trademark Operation that the document has been recorded. See TMEP §§504 and 504.01 regarding the circumstances in which the Trademark database will be automatically updated. Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §§504 and 504.01, or if there is insufficient time for the Assignment Recordation Branch to process a recently recorded document for automatic updating (see TMEP §504.02), the new owner must file a written request that the certificate issue in the name of the new owner. The new owner can search the Assignment Recordation Branch’s database, i.e., the Electronic Trademark Assignment System (“ETAS”), at USPTO Assignments on the Web to determine whether the assignment has been recorded, and can check TSDR at http://tsdr.uspto.gov/ to determine whether the Trademark database has been updated to reflect the change of ownership. A request that a registration issue in a new name should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee’s address and set forth the assignee’s citizenship or state of incorporation or organization (for United States assignees), or country of incorporation or organization (for foreign assignees). If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.

If the applicant states that a request to record a change of ownership has been filed with the Assignment Recordation Branch but is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney must suspend action pending recordation of the document and entry of the information into the Trademark database. See TMEP §716 regarding suspension.

Clear Chain of Title Required. A request that a registration issue in the name of a new owner will not be granted unless documents recorded in the Assignment Recordation Branch show clear chain of title from the original applicant to the new owner. The examining attorney must check the Assignment Recordation Branch’s database (“Assignment database”) on the USPTO website at Assignments on the Web to ensure that there is clear chain of title. If the Assignment database shows clear chain of title, the examining attorney must ensure that the Trademark database is updated, if necessary.

Example: ABC Corporation owns Application 1. ABC Corporation files an assignment of the entire interest and goodwill of the business, transferring ownership of Application 1 to DEF Incorporated. DEF Incorporated later files an assignment of the entire interest and goodwill of the business transferring ownership of Application 1 to XYZ Corporation. The Assignment database shows clear chain of title from ABC Corporation to DEF Incorporated to XYZ Corporation.

If the Assignment database does not show clear chain of title, the examining attorney must not update the Trademark database. If it is necessary to issue an Office action regarding other outstanding issues, the examining attorney should advise the applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If it is not otherwise necessary to issue an Office action, the examining attorney should enter a Note to the File in the record indicating that the Trademark database cannot be updated because there is no clear chain of title in the new owner. If the applicant does not record the necessary documents to show clear chain of title in the new owner, the registration will issue in the name of the party who has clear chain of title according to the Assignment database. See 37 C.F.R. §3.73(b).

Time for Recordation and Filing of Request for Issuance in Name of New Owner. If the new owner wishes to ensure that the registration issues in its name, it must record the assignment before the mark is approved for publication or registration on the Supplemental Register in an application based on §1(a) or §44, or prior to acceptance of a statement of use in an application based on §1(b). The USPTO cannot ensure that a request to issue the certificate in a new name filed after the mark has been approved for publication or registration will be processed in time for the registration to issue in the name of the new owner.

If, before a mark is approved for publication or registration, an applicant has recorded the appropriate document and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.