TMEP 502.03: Issuance of New Certificate to Assignee of Registrant

This is the October 2015 Edition of the TMEP

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502.03    Issuance of New Certificate to Assignee of Registrant

Registrations Under §§1 and 44 of the Trademark Act. In registrations that issued based on applications under §1 or §44 of the Trademark Act, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner (or in the registrant’s new name), if the new owner/registrant: (1) records the appropriate document (e.g., assignment document, change of name) with the Assignment Recordation Branch; (2) files a written request that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §§2.6(a)(8) and 3.41). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under 37 C.F.R. §11.14 (“qualified practitioner”) must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85. The recorded document(s) must show clear chain of title from the original registrant to the party requesting issuance of a new certificate. See TMEP §503.03 regarding the requirements for recording.

Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database. The certified copy will not show any transfer of ownership that has not been recorded with the Assignment Recordation Branch.

See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of a §8 affidavit in the name of the new owner of a registration, and TMEP §1606.06 regarding renewal in the name of the new owner.

Registered Extensions of Protection of International Registrations to the United States. In a registered extension of protection, the new owner must record the assignment, change of name, or other document affecting title with the IB. See TMEP §501.07 regarding assignment of registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes in the International Register. The IB will notify the USPTO when the change of ownership, including a change of owner name, is recorded in the International Register, and the USPTO will record the change in the Assignment database and update the “Ownership” field in the Trademark database. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. The recorded document(s) must show clear chain of title from the original owner to the party requesting issuance of a new certificate.

The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner: (1) records the appropriate document (e.g., assignment document, change of name certificate) with the IB; (2) files a written request with the Assignment Recordation Branch that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §2.6(a)(8)). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §2.171(a).

Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database. The certified copy will not show any transfer of ownership that has not been recorded with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.