512.01    Assignment of Mark

When there has been an assignment of a mark that is the subject of, or relied upon in, an inter partes proceeding before the Board, the assignee may be joined or substituted, as may be appropriate, upon motion granted by the Board, or upon the Board’s own initiative. [ Note 1.]

When a mark that 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 that 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 with the USPTO or that proof of the assignment has been submitted in the Board proceeding record. [ Note 2.]

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 3.] Except in limited circumstances, [ Note 4.] requests to record assignments of § 66(a) applications and registrations must be filed directly with the International Bureau. [ Note 5.] 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 with the International Bureau. [ Note 6.]

If the mark in an application or registration that is the subject matter of an inter partes proceeding before the Board is assigned, together with the application or registration, the assignee may be joined as a party (as a party defendant, in the case of an opposition or cancellation proceeding; or as a junior or senior party, as the case may be, in an interference or concurrent use proceeding) upon the filing with the Board of a copy of the assignment. When the assignment is recorded in the Assignment Recordation Branch of the USPTO [ Note 7.], the assignee may be substituted as a party if the assignment occurred prior to the commencement of the proceeding [ Note 8.], the assignor is no longer in existence, the plaintiff raises no objections to substitution, or the discovery and testimony periods have closed; otherwise, the assignee will be joined, rather than substituted, to facilitate discovery. [ Note 9.]

If a mark pleaded by a plaintiff is assigned and a copy of the assignment is filed with the Board, the assignee ordinarily will be substituted for the originally named party if the assignment occurred prior to the commencement of the proceeding, if the discovery and testimony periods have closed, if the assignor is no longer in existence, or if the defendant raises no objection to substitution; otherwise, the assignee will be joined, rather than substituted, to facilitate the taking of discovery and the introduction of evidence. [ Note 10.] See TBMP § 303.05(b) (Opposition Filed by Privy). The assignment does not have to be recorded with respect to a plaintiff’s pleaded application or registration before substitution or joinder (whichever is appropriate) is made. However, recordation in the Assignment Recordation Branch of the USPTO is advisable because it will aid the assignee in its effort to prove ownership of the application or registration at trial. [ Note 11.]

If the mark of an excepted common law user (that is not the owner of an involved application or registration) in a concurrent use proceeding is assigned, the assignee will be joined or substituted as party defendant upon notification to the Board of the assignment. [ Note 12.]

Alternatively, if there has been an assignment of a mark that is the subject of, or is relied upon in, a proceeding before the Board, and the Board does not order that the assignee be joined or substituted in the proceeding, the proceeding may be continued in the name of the assignor. [ Note 13.]

Further, the fact that a third party related to the plaintiff, such as a parent or licensor of the plaintiff, may also have an interest in a mark relied on by the plaintiff does not mean that the third party must be joined as a party plaintiff. [ Note 14.]

A joint applicant may assign an intent-to-use application for registration of a mark to a second joint applicant without violating Trademark Act § 10(a)(1), 15 U.S.C. § 1060(a)(1). [ Note 15.]

NOTES:

 1.   See, e.g., NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1031 (TTAB 2014) (finding joinder rather than substitution appropriate where assignment of pleaded mark was executed one year after proceeding commenced and nothing in the record indicated petitioner or business connected with mark no longer in existence). See also Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1910 n.1 (TTAB 2000) (assignee joined at final decision).

 2.   See 37 C.F.R. § 3.71; 37 C.F.R. § 3.73(b).

 3.   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.

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

 5.   See Trademark Act § 72, 15 U.S.C. § 1141l; 37 C.F.R. § 7.22. See also TMEP § 1904.06 (Assignment of Extension of Protection to the United States).

 6.   See TMEP § 501.07 (Assignment of Extension of Protection of International Registration to the United States); TMEP § 1904.06 (Assignment of Extension of Protection to the United States).

 7.   With respect to Trademark Act § 66(a), 15 U.S.C. § 1141f (a), applications and registrations, the USPTO will record only those assignments, or other documents of title, that have been recorded in the International Register. See TMEP § 501.07; TMEP § 1904.06.

 8.   Cf. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1434 n.1 (TTAB 2007) (opposition captioned in name of new opposer where assignment of pleaded registrations recorded prior to filing of notice of opposition).

 9.   See, e.g., 37 C.F.R. § 2.113(c)(1), 37 C.F.R. § 2.113(d), 37 C.F.R. § 3.71(d), and 37 C.F.R. § 3.73(b); Fed. R. Civ. P. 17 and 25; NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1031 (TTAB 2014) (finding joinder rather than substitution appropriate where assignment of pleaded mark was executed one year after proceeding commenced and nothing in the record indicated petitioner or business connected with mark no longer in existence); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1434 n.2 (TTAB 2007) (applicant’s motion to join another defendant granted where assignment of application occurred after commencement of proceeding); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1229 (TTAB 1993) (joinder after assignment); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1138 n.4 (TTAB 1990) (assignee joined after filing copy of an assignment which occurred subsequent to commencement of proceeding); Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 857 n.1 (TTAB 1986) (assignee joined where papers filed by parties indicated registration had been assigned). See also Huffy Corp. v. Geoffrey Inc., 18 USPQ2d 1240, 1242 (Comm’r 1990) (joinder); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1222 n.2 (TTAB 1987) (joinder after assignment); Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 nn.2-3 (TTAB 1985) (substitution due to reincorporation and merger); E.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ 713, 714 n.1 (TTAB 1984) (joinder of successor-in-interest); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 803 n.1 (TTAB 1982) (substitution resulting from partnership incorporating under the same name).

 10.   See, e.g., 37 C.F.R. § 2.113(c); 37 C.F.R. § 2.113(d); 37 C.F.R. § 3.71(d); 37 C.F.R. § 3.73(b); Fed. R. Civ. P. 17 and 25; 37 C.F.R. § 2.102(b); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1434 n.1 (TTAB 2007) (opposition captioned in name of new opposer where assignment of pleaded registrations recorded prior to filing of notice of opposition); William & Scott Co. v. Earl’s Restaurants Ltd., 30 USPQ2d 1870, 1872-73 (TTAB 1994) (substitution of opposer appropriate where assignment occurred prior to commencement); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1225 (TTAB 1993) (motion to substitute filed during testimony period granted to the extent that successor was joined); Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1079-80 (TTAB 1992) (opposer’s motion to substitute granted where copy of assignment was filed and applicant did not object); Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1035 n.2 (TTAB 1988) (survivor of merger substituted at final decision).

See also Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1004 n.1 (TTAB 1984) (substitution as party defendant after recordation of chain of title in the Office); Electronic Realty Associates, Inc. v. Extra Risk Associates, Inc., 217 USPQ 810, 812 n.3 (TTAB 1982) (substitution after testimony periods had expired; assignment document showing nunc pro tunc assignment to the day preceding the filing date of the application);Liberty & Co. v. Liberty Trouser Co., 216 USPQ 65, 66 n.1 (TTAB 1982) (substitution of party defendant as reflected in assignment records in the Office); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (joinder of defendant instead of substitution; upon filing of assignment with the Assignment Recordation Branch, substitution may occur due to transfer of ownership prior to institution of cancellation); Aloe Creme Laboratories, Inc. v. Aloe 99, Inc., 188 USPQ 316, 322 n.12 (TTAB 1975) (reference to applicant in decision refers to both applicant of record and successor-in-interest in view of testimony regarding transfer of ownership of mark). Cf. SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1708-09 (TTAB 1994) (motion to join licensee as "co-opposer" denied since right to oppose may be transferred but not shared unless timely opposition is filed); Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1076-77 (TTAB 1993) (substitution of proper party in interest not permitted in view of misidentification of original party).

 11.   With respect to Trademark Act § 66(a), 15 U.S.C. § 1141f(a), applications and registrations, the USPTO will record only those assignments, or other documents of title, that have been recorded in the International Register. See TMEP §501.07;TMEP § 1904.06.

 12.   See Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1225 (TTAB 1993) (joinder); Pennsylvania Fashion Factory, Inc. v. Fashion Factory, Inc., 215 USPQ 1133, 1134 n.3 (TTAB 1982) (substitution of successor-in-interest as party defendant).

 13.   See Fed. R. Civ. P. 25(c); Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1311 n.1 (TTAB 1999) (decision will be binding upon the assignee); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 803 n.1 (TTAB 1982) (same).

 14.   See Avia Group International Inc. v. Faraut, 25 USPQ2d 1625, 1626-27 (TTAB 1992) (respondent’s motion to join petitioner’s licensor as party plaintiff denied). Cf. 37 C.F.R. § 2.107(a)  and 37 C.F.R. § 2.107(b)  (if no assignment of a pleaded mark, opposition may not be amended to add a joint opposer after close of time for filing opposition).

 15.   Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1871 (TTAB 2010).