TMEP 502.02(c): Examining Attorney’s Action Regarding Assignment

This is the October 2015 Edition of the TMEP

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502.02(c)    Examining Attorney’s Action Regarding Assignment

If, prior to approval for publication for opposition or registration on the Supplemental Register, or prior to acceptance of a statement of use in an application under §1(b), the applicant advises the examining attorney, or the examining attorney learns through another source, that an assignment has been recorded, the examining attorney must check the Assignment database at Assignments on the Web to ensure that there is clear chain of title, and must ensure that the Trademark database is updated before approving the mark for publication or registration.

In general, the examining attorney should only issue an Office action questioning whether an assignment has occurred if an entity attempts to take action with respect to the application and USPTO records show ownership in another party. In this situation, the assignee must establish entitlement to take the action, either by recordation of an assignment or submission of proof of the assignment. 37 C.F.R. §3.73(b); TMEP §502.01.

During initial examination, the examining attorney must not suspend action or delay issuance of a final action to await recordation of a document. However, if the applicant submits a request indicating that the relevant document has been submitted for recordation and the application is in condition to be approved for publication for opposition or registration on the Supplemental Register, the examining attorney must suspend the application until the document has been recorded and the information regarding the assignment or the change of name has been entered into the Trademark database.

Similarly, during examination of the statement of use in an application under §1(b), the examining attorney must withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant’s new name has been entered in the Trademark database. If the application is in condition to be approved for publication or registration, 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.