TMEP 504: Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database

This is the October 2015 Edition of the TMEP

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504    Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database

Except in the limited circumstances set forth in TMEP §504.01, the USPTO will automatically update the ownership information in the Trademark database of registrations and pending applications when one of the following documents is recorded with the Assignment Recordation Branch:

  • Assignment of entire interest and goodwill;
  • Nunc Pro Tunc Assignment of entire interest and goodwill;
  • Merger;
  • Change of Name;
  • Merger and Change of Name; or
  • Entity Conversion.

In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the new owner. In all other situations, the new owner must separately notify the Trademark Operation in writing that ownership has changed in order to update the ownership information in the Trademark database.

To ensure that the Trademark database is automatically updated, the party filing the change-of-ownership documents should identify the “Nature of the Conveyance” by checking the “Assignment,” “Nunc Pro Tunc Assignment,” “Merger,” “Change of Name,” “Merger and Change of Name,” or “Entity Conversion” box in the “Nature of Conveyance” field and should not check the “Other” box.

The Trademark database will show only the last recorded owner, not the complete chain of title. The complete chain of title can be obtained from the Assignment Recordation Branch’s database on the USPTO website at Assignments on the Web. The “Ownership” field in the Trademark database will be automatically updated whether or not the records of the Assignment Recordation Branch show clear chain of title transferring ownership to the last recorded owner. The Trademark database will include the reel and frame number and execution date of the recorded document, as well as a notation to “Check Assignments.” Examining attorneys must check assignment records to ensure that the owner of record in the Trademark database has clear chain of title. If there is no clear chain of title, the ownership information should be changed to the last owner with clear chain of title and a Note to the File should be entered in the record to document the change.

Trademark owners can search the Assignment database to determine whether an assignment has been recorded and can check TSDR at http://tsdr.uspto.gov/ to determine whether the Trademark database has been updated.

Note - Filing Multiple Assignments with the Same Execution Date on the Same Date: When multiple assignments with the same execution date are filed on the same date, the ownership information in the Trademark database will not be automatically updated. See the note in TMEP §504.01 for further information.

Automatic updates to the ownership information will not automatically update the correspondence address in the USPTO records. A separate written request to change the correspondence address must be filed. See TMEP §503.01(b).