609.02(f)    Correspondence After Recordation of Change of Ownership

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. Additionally, the USPTO will only communicate with the applicant or registrant, if unrepresented, or the applicant’s/registrant’s attorney, if represented, at the correspondence address listed in the Trademark database. See 37 C.F.R. §2.18(a)(1) -(2).

Recordation with the Assignment Services Branch of an assignment (or other document changing title) that includes a new owner and/or attorney address does not automatically update the correspondence address in the USPTO's Trademark database. TMEP §503.01(b).  To ensure that the Trademark database is updated to reflect the correct correspondence address, new owners must file a separate request through TEAS using the Change Address or Representation (CAR) form, or on paper if permitted (see TMEP §301.01), to change the correspondence address. Id. 

If the new owner does not file a separate request through TEAS using the CAR form, but instead files a properly signed TEAS communication (e.g., a response to an Office action or statement of use) bearing a new owner’s or attorney’s correspondence address in the proper TEAS fields, the USPTO will update the Trademark database to reflect the address of the new owner or the new owner’s qualified U.S. attorney, if applicable, even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01.  If the new owner is not represented by a qualified U.S. attorney, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication. However, based on the new correspondence address, the new owner may be required to appoint a qualified U.S. attorney to represent it at the USPTO. See TMEP §601 regarding the requirement for representation by a qualified U.S. attorney, as determined by the domicile of the mark owner.

If a new qualified U.S. attorney signs a document or is identified as a representative in a document submitted to the USPTO on behalf of the new owner, the USPTO will recognize the new attorney even absent a new power of attorney and/or revocation of the previous power. 37 C.F.R. §2.17(b)(1)(ii) -(iii); see TMEP §604.03.  However, if the previously recognized qualified U.S. attorney appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that attorney.  The previously recognized attorney does not have to file a new power of attorney signed by the new owner.

See also TBMP §§117–117.08 regarding correspondence in Board proceedings and TMEP §§505–505.02 regarding requests to update ownership information after recordation of a change of ownership.