TMEP 502.02(b): Applications Under §66(a) of the Trademark Act

This is the October 2015 Edition of the TMEP

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502.02(b)    Applications Under §66(a) of the Trademark Act

In an application under §66(a) of the Trademark Act, a new owner must record any assignment, change of name, or other document affecting title with the IB. The document(s) must show clear chain of title from the original owner to the party who is taking the action. See TMEP §501.07 regarding assignment of §66(a) applications, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes with the IB. The IB will notify the USPTO when the change of ownership, including change of owner name, is 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, and will automatically update the “Ownership” field in the Trademark database. A new owner can check TSDR at http://tsdr.uspto.gov/ to determine whether the Trademark database has been updated to reflect a change in ownership that has been recorded with the IB.

If the Trademark database has not been updated, before the mark is approved for publication the new owner should file a written request that the registration issue in the name of the new owner. The request that a registration issue in the name of the new owner must be directed to the examining attorney, and must state that the appropriate document has been recorded (or filed for recordation) with the IB, and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request must 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 must set forth the names, legal entities, and national citizenship (or state or country of organization or incorporation) of all general partners. See TMEP §502.02(c) regarding an examining attorney’s handling of an application after a mark has been assigned.

If the applicant states that a request to record a change of ownership has been filed with the IB but is not yet recorded, and the application is in condition to be approved for publication, 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.

If, before a mark is approved for publication, an applicant has recorded the appropriate document with the IB 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.