504.01 Circumstances in Which Trademark Database Will Not Be Automatically Updated
In the circumstances discussed below, the USPTO will not automatically update the Trademark database to show the change in ownership. In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark database be updated to show title in the new owner. 37 C.F.R. §3.85; TMEP §§502.02(a)-502.02(b) and 502.03. See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP § 505.02 regarding requests to update ownership information after registration.
- (1) Execution Date Conflicts with Previously Recorded Document. If a previously recorded assignment, merger, change of name, or any other recorded document for the same application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark database will not be automatically updated. Office personnel will have to review the assignment records and update the database manually.
Note - Filing Multiple Assignments with the Same Execution Date on the Same Date: When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark database is not automatically updated. Office personnel must manually update the ownership information after reviewing the entire chain of title to identify the proper owner. This review is done when a written request to update ownership information is filed in accordance with TMEP §505. Therefore, information regarding the proper order of the multiple transfers should be included in the written request to the Trademark Operation so that proper chain of title may be determined and the ownership record updated accordingly in the Trademark database.
- (2) Blackout Period: Ownership of Pending Applications and Registrations Cannot be Updated During Certain Time Periods. The Trademark database cannot be automatically updated to show a change of ownership in the following circumstances:
- (a) For §§1(a) and 44 applications:
- Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette; and
- Approximately three weeks before the application is scheduled to issue.
- (b) For §1(b) applications:
- Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette;
- Approximately three weeks before the Notice of Allowance is scheduled to issue; and
- After the SOU is accepted, approximately three weeks before the registration is scheduled to issue.
- (a) For §§1(a) and 44 applications:
In addition, for all applications and registrations, the database cannot be automatically updated if the application or registration is involved in a Trademark Trial and Appeal Board (TTAB) proceeding, or for pending applications, if a notice of extension of time to file an opposition has been filed with the TTAB.
- (3) Maximum Number of Ownership Changes. The Trademark database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
- Prior to publication – up to nine changes of ownership.
- Between publication and registration – up to nine additional changes of ownership.
In the situations described above, new owners must file a written request with the Trademark Operation, as set forth in TMEP §505, to have the Trademark database updated or, if there is a TTAB proceeding, the request should be filed with the TTAB. See TMEP §504 regarding the types of assignment documents for which the USPTO will automatically update the ownership information in the Trademark database.