TMEP 504.03: Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

This is the October 2015 Edition of the TMEP

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504.03    Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

In the situations set forth in TMEP §504, the Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has clear chain of title. If the Trademark database is automatically updated to show ownership of an application or registration in a party who does not have clear chain of title as evidenced by the Assignment database, the owner of the application or registration may file a written request to have the “Ownership” field in the Trademark database corrected. The USPTO will grant a request for correction of the “Ownership” field if:

  • (1) The Trademark database was automatically updated to show ownership in a party who does not have clear chain of title according to the Assignment database; and
  • (2) At the time the Trademark database was automatically updated in the name of the incorrect party, the Assignment database showed clear chain of title in the party requesting correction of the “Ownership” field in the Trademark database.

The correction of the Trademark database will not be automatically reflected in the Assignment database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06-503.06(f) for correcting errors in the Assignment database.

Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed for recordation, transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Recordation Branch records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its database, upon ABC Corporation’s request, because the Assignment database does not show clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment database shows clear chain of title in ABC Corporation.

In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06-503.06(f). That is, the party must first file corrective documents with the Assignment Recordation Branch, pay the recordation fees necessary to correct the error, and notify the Trademark Operation in writing that the corrective documents have been recorded.

Prior to registration, a request for correction of the “Ownership” field in the Trademark database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01(a)-1505.01(f). In a §1(b) application, if a request for correction of the “Ownership” field is filed between the issuance of the notice of allowance and the submission of a statement of use, such a request may be entered during this period with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. Alternatively, the request can be made when filing the statement of use or a request for extension of time for filing a statement of use. See 37 C.F.R. §§2.77, 2.146; TMEP §§1107–1107.01.

After registration, a request for correction of the “Ownership” field should be submitted in writing to the Post Registration Section in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. §2.174. See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.