512.03    Issuance of Registration to Assignee, or in New Name

37 C.F.R. § 3.85  Issue of registration to assignee. The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.

Even where the assignee of an application that is the subject matter of a Board inter partes proceeding has been joined or substituted as a party to the proceeding, see TBMP § 512.01, any registration issued from the application may issue in the name of the assignor unless the assignee complies with the requirements of 37 C.F.R. § 3.85. Specifically, to ensure that the registration will issue in its name, the assignee must file a written request in the application (or in the Board proceeding, if that proceeding has not yet ended), by the time the application is being prepared for issuance of the certificate of registration that the registration be issued in its name. [ Note 1.] In addition, an appropriate document must be of record in the Assignment Recordation Branch of the USPTO, or the written request must state that the document has been filed for recordation. Finally, the address of the assignee must be made of record in the application file.

Similarly, even though the title of an inter partes proceeding before the Board may have been changed to reflect a name change of an applicant whose application is the subject of the proceeding, any registration issued from the application may issue in the applicant’s original name unless the applicant complies with the requirements of 37 C.F.R. § 3.85. [ Note 2.] If an assignment or change of name document is recorded in the Assignment Recordation Branch well prior to the time the subject application is prepared for issuance of a registration, the registration may issue in the name of the assignee, or in the new name, even if no 37 C.F.R. § 3.85  request is filed. However, the registration may issue in the name of the assignor or in the old name. The purpose of the written request is to call the attention of the USPTO to the assignment or change of name and thus to ensure that the registration issues in the name of the assignee or in the new name. Accordingly, it is sufficient for the purpose if applicant files a paper referring to the assignment or change of name and the assignment or change of name document has either been recorded, or applicant states that the document has been submitted for recording. [ Note 3.]

Please Note: Trademark Act § 10, 15 U.S.C. § 1060, and part 3 of 37 C.F.R. are not applicable to Trademark Act § 66(a), 15 U.S.C. § 1141f(a), applications and registrations. [ Note 4.] Except in limited circumstances [ Note 5.], requests to record assignments of § 66(a) applications and registrations must be filed directly with the International Bureau. [ Note 6.] 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 7.]

NOTES:

 1.   Smart Inventions Inc. v. TMB Products LLC, 81 USPQ2d 1383, 1384 n.3 (TTAB 2006) (new owner can help ensure issuance of registration in its name by recording assignment in USPTO and filing request that registration issue in new owner’s name).

 2.   See Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.1 (TTAB 1992).

 3.   See 37 C.F.R. § 2.171  for procedures to receive a new certificate of registration on change of ownership or when ownership with respect to some, but not all, of the goods and/or services has changed.

 4.   See 37 C.F.R. § 7.22  et seq. for information on recording changes to Trademark Act § 66(a), 15 U.S.C. § 1141f(a), applications and registrations.

 5.   See 37 C.F.R. § 7.23; 37 C.F.R. § 7.24.

 6.   See Trademark Act § 72, 15 U.S.C. § 1141l; 37 C.F.R. § 7.22, TMEP § 501.07, and TMEP § 1904.06.

 7.   See TMEP § 501.07 and TMEP § 1904.06.