124 Action by Assignee
When a mark which is the subject of a federal application or registration has been assigned, together with the application or registration, in accordance with Trademark Act § 10, 15 U.S.C. § 1060, any action with respect to the application or registration which may or must be taken by the applicant or registrant may be taken by the assignee (acting itself, or through its attorney or other authorized representative), provided that the assignment has been recorded or that proof of the assignment has been submitted. [ Note 1.] Similarly, when a mark which is not the subject of a federal application or registration, but which is owned and pleaded by a plaintiff in a Board inter partes proceeding, has been assigned, the assignee may act in the proceeding in place of the assignor, provided that proof of the assignment has been submitted in the proceeding. See TBMP § 512.01 (Assignment of Mark).
Please note: Trademark Act § 10, 15 U.S.C. § 1060, and part 3 of 37 CFR are not applicable to Trademark Act § 66(a), 15 U.S.C. § 1141f(a) applications and registrations. [ Note 2.] Except in limited circumstances, [ Note 3.] requests to record assignments of § 66(a) applications and registrations must be filed directly with the International Bureau of the World Intellectual Property Organization. [ Note 4.] The International Bureau will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments, or other documents of title, that have been recorded in the International Register. [ Note 5.]
NOTES:
1. 37 CFR § 3.71(d) (Prosecution by assignee), 37 CFR § 3.73(b) (Establishing right of assignee to take action). See Trademark Act § 72, 15 U.S.C. § 1141l, 37 CFR § 7.22 –37 CFR § 7.24 regarding assignment of Trademark Act § 66(a), 15 U.S.C. § 1141f(a) applications and registrations.
2. TMEP § 503.05. See 37 CFR § 7.22 –37 CFR § 7.24(a) for information on recording changes to applications and registrations under Trademark Act § 66(a).
3. See TMEP § 1906.01(a)(i).
4. 37 CFR § 7.22. See also TMEP § 1906, et seq. (Recording Changes in International Register).
5. See TMEP § 1906.01(a).