512.02    Change of Name

If the name of a party to an inter partes proceeding before the Board is changed, the title of the Board proceeding may be changed, upon motion or upon the Board’s own initiative, to reflect the change of name, provided that appropriate evidence thereof is made of record in the proceeding. Such evidence may consist, for example, of a copy of the name change document, or the reel and frame numbers at which such document is recorded in the Assignment Recordation Branch of the USPTO. [ Note 1.] If no such evidence is made of record in the proceeding, the proceeding may be continued in the party’s old name. [ Note 2.] See note to TBMP § 512.01 regarding assignments of Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  applications and registrations.

A name change document does not have to be recorded in the Assignment Recordation Branch of the USPTO with respect to a defendant’s involved application or registration, or a plaintiff’s pleaded application or registration, in order for the Board proceeding title to be changed to reflect the new name. However, recordation is advisable because it facilitates proof of ownership of the application or registration, and because filing for recordation is one of the 37 C.F.R. § 3.85  requirements for an applicant that desires, if it prevails in the proceeding, to have its registration issue in its new name. [ Note 3.] See TBMP § 512.03 (Issuance of Registration to Assignee, or in New Name).

NOTES:

 1.   See, e.g., Spirits International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1545 n.1 (TTAB 2011) (changing caption to reflect change of corporate entity after conversion; best practice is to file a separate submission with the Board advising of the change); WMA Group Inc. v. Western International Media Corp., 29 USPQ2d 1478, 1479 n.3 (TTAB 1993) (changing caption to reflect change of corporate name of party); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1135 n.1 (TTAB 1992) (caption to be changed if document evidencing change of name is submitted); NutraSweet Co. v. K & S Foods Inc., 4 USPQ2d 1964, 1964 n.2 (TTAB 1987) (although no request to substitute was filed, where the change of name was recorded and there was no dispute as to facts and circumstances surrounding name change, opposer under new name was substituted as plaintiff); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1004 n.1 (TTAB 1984) (substitution of defendant due to recordation of merger, assignment and change of name in Office). Cf. In re Brittains Tullis Russell Inc., 23 USPQ2d 1457, 1458 n.1 (Comm’r 1991) (in petition to Commissioner to accept Trademark Act §§ 8 & 15 affidavit, registration file evidenced change of registrant’s name and claim of ownership accepted).

 2.   See, e.g., Maine Savings Bank v. First Banc Group of Ohio, Inc., 220 USPQ 736, 737 n.3 (TTAB 1983) (caption was not changed to reflect name change where no supporting documents submitted); National Blank Book Co. v. Leather Crafted Products, 218 USPQ 827, 827 n.2 (TTAB 1983) (opposer's change of name). Cf. Fed. R. Civ. P. 25(c).

 3.   See TMEP § 502.03. Cf. TMEP § 1906.01(a) and TMEP § 1906.01(c) for assignments and changes of names involving international registrations on the International Register.