TMEP 609.02(f): Correspondence After Recordation of Change of Ownership

This is the October 2015 Edition of the TMEP

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609.02(f)    Correspondence After Recordation of Change of Ownership

For purposes of recognition as a representative, the USPTO considers a power of attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1). TMEP §604.02.

Recordation of an assignment (or other document changing title) with the Assignment Services Branch does not automatically update the correspondence address in the USPTO's Trademark database. See TMEP §503.01(b). To ensure that the Trademark database is updated to reflect the correct correspondence address, new owners should file a separate written request with the Trademark Operation to change the address, preferably through TEAS.

If the new owner does not file a separate written request with the Trademark Operation to change the correspondence address, but instead takes an action in connection with an application or registration by filing a properly signed communication (e.g., a response to an Office action or statement of use) bearing a new correspondence address, the USPTO may update its Trademark database to reflect the address of the new owner or the new owner’s qualified practitioner even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01. If the new owner is not represented by a qualified practitioner, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication.

If a new qualified practitioner appears in person or signs a document on behalf of the new owner, the USPTO will recognize the new practitioner even absent a new power of attorney or revocation of the previous power, pursuant to 37 C.F.R. §2.17(b)(1)(ii). See TMEP §604.02. However, if the previously recognized qualified practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner. The previously recognized practitioner does not have to file a new power of attorney signed by the new owner.

See also TBMP §§117–117.08 regarding correspondence in Board proceedings and TMEP §§505–505.02 regarding requests to update ownership information after recordation of a change of ownership.