505    Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information

As noted in TMEP §504.01, if the recordation of a document with the Assignment Recordation Branch does not automatically update the ownership information in the Trademark database, the new owner must separately notify the Trademark Operation in writing that ownership has changed, so that the ownership information is updated in the Trademark database.  See TMEP §505.01 regarding the procedures for requesting that ownership information be updated in pending applications, and TMEP §505.02 regarding the procedures for requesting that ownership information be updated after registration.

505.01   Request to Update Ownership Information in Pending Application

Prior to registration, a request to update the ownership information in the Trademark database should be made in writing and directed to the examining attorney.  If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01 et seq.  In a §1(b) application, if such a request is filed between the issuance of the notice of allowance and the filing of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use.  37 C.F.R. §2.77; TMEP §1107.

See TMEP §§502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.

505.02   Request to Update Ownership Information After Registration

For registrations, even if the new owner records the appropriate document with the Assignment Recordation Branch and notifies the Trademark Operation that ownership has changed, the Post Registration Section will not update the Trademark database with new owner information, unless either:  (1) the owner of the registration files a written request to amend the registration pursuant to §7(d) of the Trademark Act, 15 U.S.C. §1057(d); or (2) the owner takes an action, such as filing a §8 affidavit or §9 renewal application.

Thus, if the owner of the registration is not taking an action such as filing a §8 affidavit, the owner must:

  • (1)  Record the appropriate document (e.g., assignment, change of name) with the Assignment Recordation Branch;
  • (2) File a written request that the Trademark database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
  • (3) Pay the required fee (37 C.F.R. §§2.6(a)(8) and 3.41).

15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85.  Office records must show clear chain of title from the original registrant to the new owner.  See TMEP §502.03.

The owner must file a §7 request to amend the registration even if the registrant does not want a new registration certificate but only wishes the Trademark database to be updated.  See TMEP §502.03 regarding issuance of a new certificate in the name of the new owner.

To expedite processing, new owners are encouraged to use the Trademark Electronic Application System ("TEAS") form entitled "Section 7 Request for Amendment or Correction of Registration Certificate," available on the USPTO website at http://www.uspto.gov, to file the request to update the ownership information in the Trademark database.