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; 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, 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 registrant, if unrepresented, or the applicant’s or registrant’s qualified U.S. attorney, if represented at the correspondence address listed in the Trademark database. See 37 C.F.R. §2.18(a)(1) -(2). However, the USPTO considers the recognition of a qualified U.S. attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1); TMEP §604.03.
If an assignment document is recorded with the Assignment Recordation Branch that includes a new owner and/or attorney address, the USPTO will not change the correspondence address in the Trademark database. The mere inclusion of a new owner and/or attorney 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 in the Trademark database.
The USPTO will change the correspondence address when the new owner or its attorney files (1) a separate request to explicitly change the owner and/or attorney address using the TEAS Change Address or Representation form, or submitted on paper, if permitted (see TMEP §301.01) or (2) a properly signed TEAS communication (e.g., a response to an Office action or statement of use) bearing a new owner’s and/or attorney’s correspondence address. See TMEP §609.02(f) for more information regarding correspondence after recordation of a change of ownership, and §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 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 Assignment Recordation Branch does not examine the substance of documents submitted for recording for the purpose of determining validity. However, the Assignment Recordation Branch will review any underlying document submitted in support of an assignment to merely ensure that it is consistent with the information provided on the cover sheet, including whether or not the mark is transferred with the goodwill of the business, as required under 15 U.S.C. §1060(a)(1). See TMEP §503.05 regarding procedures involving documents returned as not recorded by the Assignment Recordation Branch. 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. See 37 C.F.R. §3.56.