503.01 Effect of Recording a Document
37 C.F.R. §3.54 Effect of recording.
The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.
503.01(a) Recording May Not Update Ownership Information
Recording a document with the Assignment Recordation Branch does not necessarily change or update the ownership of record shown in the Trademark database. There are circumstances in which the Trademark database will be updated automatically upon the recordation of an assignment, change of name, or other document transferring title. See TMEP §§504 and 504.01. In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark database be updated manually. See TMEP §§ 504.01 and 505. See also TMEP §§502.02–502.03 regarding issuance of a certificate of registration in the name of a new owner.
503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
The USPTO will only communicate with the applicant or the applicant’s attorney at the correspondence address listed in the Trademark database. If an assignment document is recorded with the Assignment Recordation Branch and it includes a new correspondence address, the USPTO will not enter the change of correspondence address or update the Trademark database. The mere inclusion of the new correspondence address on documents filed with the Assignment Recordation Branch does not effect a change in the correspondence address in the Trademark database, even if the ownership information is automatically updated. The USPTO will not change the correspondence address unless a separate written request is made to explicitly change the correspondence address. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, and TMEP §504 regarding automatic updating of ownership information in the Trademark database after recordation of a document with the Assignment Recordation Branch.
503.01(c) Recording Is Not a Determination of Validity
The Assignment Recordation Branch does not examine the substance of documents submitted for recording. The act of recording a document is a ministerial act, and not a determination of the document’s validity or of its effect on title to an application or registration. The USPTO will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use under 15 U.S.C. §1051(d)(1) or a §8 affidavit). 37 C.F.R. §3.54.
503.01(d) Recording Does Not Constitute Response to Office Action
Recording a document with the Assignment Recordation Branch does not constitute a response to an outstanding Office action.
503.01(e) Conditional Assignment
If an assignment is conditional on a given act or event at the time of its execution, the USPTO will view the submission of the assignment for recordation as an indication that the act or event has occurred. See37 C.F.R. §3.56.