1906.01(a)(i)    Requirements for Submitting Changes in Ownership of International Registration Through the USPTO

The USPTO will accept for submission and forward to the IB a request to record a change of ownership only if all of the following conditions have been met:

  • (1)   the assignee cannot obtain the assignor’s signature on the request to record the change;
  • (2)   the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and
  • (3) the assigned goods/services applies to the designation to the United States or an international registration that is based on a U.S. application or registration.

See 37 C.F.R. §7.23.

No other requests to record changes of ownership may be filed through the USPTO.  37 C.F.R. §§7.22, 7.23.

A request to record a change of ownership filed through the USPTO must include:

  • The international registration number;
  • The name and address of the holder of the international registration;
  • The name and address of the assignee of the international registration;
  • A statement that the assignee:  (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States.  Where an assignee’s address is not in the United States, the assignee must provide the address of its U.S. domicile or establishment;
  • A statement, signed and verified or supported by a declaration under 37 C.F.R. §2.20, that, for the request to record the assignment, either the assignee could not obtain the assignor’s signature because the holder no longer exists, or after a good-faith effort, the assignee could not obtain the assignor’s signature;
  • An indication that the assignment applies to the designation to the United States or an international registration that is based on a U.S. application or registration;
  • A statement that the assignment applies to all the goods/services in the international registration, or if less, a list of the goods/services in the international registration that have been assigned that pertain to the designation to the United States; and
  • The USPTO transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.23(a).

The USPTO currently does not have a TEAS form available for requests to record a change of ownership of an international registration.  A holder must complete an electronic copy of the official IB form MM5 available on the IB website at https://www.wipo.int/madrid/en/forms/.  The IB will not accept requests that are not submitted on the official IB form.  The form may not be handwritten.  Regs. Rule 25(1)(a); Admin. Instrs. §6(a).  

The holder should attach the electronic copy of the completed form to the TEAS Petition to the Director for an International Application/Registration form. For permitted paper filers (see TMEP §1902.02(a)), complete the MM5 form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service. The holder should include a self-addressed, stamped postcard with the paper-filed request to record a change of ownership. Upon receipt, the USPTO will place a label indicating the receipt date on the postcard and return it to the holder. The holder may mail the request using the first-class mail service of the USPS to the address in TMEP §305.01. See TMEP §§305.02-305.02(h) regarding certificate of mailing procedures and §§305.03-305.03(e) regarding Priority Mail Express® procedures. Alternatively, the holder may deliver the request by hand or courier. See TMEP §307 regarding hand delivery of documents to the USPTO.

Requests to record changes of ownership may not be submitted by fax or email and, if submitted by such means, will not be accorded a date of receipt. 37 C.F.R. §2.195(c).

If the request meets the requirements of 37 C.F.R. §7.23(a),the USPTO will forward it to the IB.  37 C.F.R. §7.23(b).  If the request does not meet these requirements, the USPTO will not forward the request to the IB, and will notify the holder of the reasons.  The USPTO will not refund the transmittal fee.  37 C.F.R. §7.23(c).

If the IB determines that a request to record a change sent through the USPTO is irregular, the IB will notify both the USPTO and the holder.  Regs. Rule 26(1).  The holder must file a response to any notice of irregularity with the IB; the response may not be filed through the USPTO.  37 C.F.R. §7.23(d).

Occasionally, extraordinary circumstances render the assignee of an international registration for which the USPTO was the Office of Origin unable to secure the signature of the holder of that registration.  In that instance, the assignee may petition the Director to waive the requirements of 37 C.F.R. §7.23(a)(6), (7), pursuant to 37 C.F.R. §2.146.  See TMEP Chapter 1700 regarding petitions to the Director.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration.  37 C.F.R. §7.22.