504    Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database

Prior to November 2, 2003, recording a document with the Assignment Recordation Branch of the USPTO did not automatically change the ownership record in the Trademark database.  To change the ownership record in the Trademark database, a new owner had to notify the Trademark Operation that ownership had changed.  37 C.F.R. §3.85.

Effective November 2, 2003, except in the limited circumstances set forth in TMEP §504.01, the USPTO will automatically update the ownership information in the Trademark database of registrations and pending applications when one of the following documents is recorded with the Assignment Recordation Branch:

  • Assignment of entire interest and goodwill;
  • Nunc Pro Tunc Assignment of entire interest and goodwill;
  • Merger; or
  • Name Change.

In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the new owner.  In all other situations, the new owner must separately notify the Trademark Operation in writing that ownership has changed in order to update the ownership information in the Trademark database.

To ensure that the Trademark database is automatically updated, the party filing the assignment, merger, or name change should identify the "Nature of the Conveyance" by checking the "Assignment," "Merger," or "Name Change" box in the "Nature of Conveyance" field and should not check the "Other" box.

The Trademark database will show only the last recorded owner, not the complete chain of title.  The complete chain of title can be obtained from the Assignment Recordation Branch’s database on the USPTO website at Assignments on the Web.  The "Ownership" field in the Trademark database will be automatically updated whether or not the records of the Assignment Recordation Branch show clear chain of title transferring ownership to the last recorded owner.  The Trademark database will include the reel and frame number and execution date of the recorded document, as well as a notation to "Check Assignments."  Examining attorneys must check assignment records to ensure that the owner of record in the Trademark database has clear chain of title. If there is no clear chain of title, the ownership information should be changed to the last owner with clear chain of title and a Note to the File should be entered in the record to document the change.

Trademark owners can search the Assignment database  to determine whether an assignment has been recorded and can check TSDR at http://tsdr.uspto.gov/  to determine whether the Trademark database has been updated.

Note - Filing Multiple Assignments with the Same Execution Date on the Same Date:  When multiple assignments with the same execution date are filed on the same date, the ownership information in the Trademark database will not be automatically updated.  See the note in TMEP §504.01 for further information.

504.01   Circumstances in Which Trademark Database Will Not Be Automatically Updated

In the circumstances discussed below, the USPTO will not automatically update the Trademark database to show the change in ownership, even if the appropriate document is recorded in the Assignment Recordation Branch on or after November 2, 2003.  In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark database be updated to show title in the new owner.  37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03.  See TMEP §§505 et seq. regarding requests to update ownership information.

    • (1) Execution Date Conflicts with Previously Recorded Document.  If a previously recorded assignment, merger, change of name, security interest document, or any other recorded document for the same application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark database will not be automatically updated.  Office personnel will have to review the assignment records and update the database manually.

      Note - Filing Multiple Assignments with the Same Execution Date on the Same Date:  When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark database will not be automatically updated.  Office personnel must manually update the ownership information to identify the proper owner based on the proper order of transfers specified by the new owner.  Therefore, in this situation, the new owner must separately notify the Trademark Operation in writing that multiple documents have been recorded, specify the order of recordation of each document, and request that the Trademark database be updated to show title in the new owner.  See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP §505.02 regarding requests to update ownership information after registration.

    • (2) Blackout Period:  Ownership of Pending Applications Cannot be Updated During Certain Time Periods.  The Trademark database will not be automatically updated to show a change of ownership during the following stages of the registration process:
      • (a) For §§1(a) and 44 applications:
        • Between approval for publication and issuance of registration.
      • (b) For §1(b) applications:
        • Between approval for publication and issuance of notice of allowance; and
        • Between acceptance of the statement of use and issuance of the registration.
    • (3) Maximum Number of Ownership Changes.  The Trademark database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
      • Prior to publication – up to nine changes of ownership.
      • Between publication and registration – up to nine additional changes of ownership.

In the above situations, new owners must file a written request with the Trademark Operation to update the Trademark database. See TMEP §504 regarding the types of assignment documents for which the USPTO will automatically update the ownership information in the Trademark database, TMEP §505.01 regarding requests to update the Trademark database prior to registration, and TMEP §505.02 regarding requests to update the Trademark database after registration.

504.02   Processing Time for Automatic Updating

The process for automatically updating the Trademark database requires that the Assignment Recordation Branch:  (1) record the document transferring title in the Assignment database; and (2) extract the trademark assignment information from the Assignment database and send it electronically to the Trademark Operation for automatic updating.  The Assignment Recordation Branch will extract trademark assignment information from the Assignment database and transmit it to the Trademark Operation once a week.

To expedite recordation with the Assignment Recordation Branch, new owners are encouraged to file requests for recordation electronically through ETAS on the USPTO website, at http://etas.uspto.gov.

If a trademark owner wants the Trademark database updated within a certain time frame, and there is insufficient time for the Assignment Recordation Branch to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation in writing of the change of ownership.  37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03.  Trademark owners can search the Assignment Recordation Branch’s database at Assignments on the Web  to determine whether an assignment has been recorded, and can check TSDR at http://tsdr.uspto.gov/  to determine whether the Trademark database has been updated.

504.03   Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

In the situations set forth in TMEP §504, the Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has clear chain of title.  If the Trademark database is automatically updated to show ownership of an application or registration in a party who does not have clear chain of title as evidenced by the Assignment database, the owner of the application or registration may file a written request to have the "Ownership" field in the Trademark database corrected.  The USPTO will grant a request for correction of the "Ownership" field if:

  • (1) The Trademark database was automatically updated to show ownership in a party who does not have clear chain of title according to the Assignment database; and
  • (2) At the time the Trademark database was automatically updated in the name of the incorrect party, the Assignment database showed clear chain of title in the party requesting correction of the "Ownership" field in the Trademark database.

The correction of the Trademark database will not be automatically reflected in the Assignment database.  To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06 et seq. for correcting errors in the Assignment database.

Example:  ABC Corporation owns Application No. 1.  An assignment of the entire interest and goodwill is filed for recordation, transferring ownership of Application 1 from ZED Corporation to XYZ Corporation.  The Assignment Recordation Branch records the assignment and transmits the trademark assignment information to the Trademark Operation.  The Trademark database is automatically updated to show XYZ Corporation as the new owner of Application 1.  The Trademark Operation will correct its database, upon ABC Corporation’s request, because the Assignment database does not show clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment database shows clear chain of title in ABC Corporation.

In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06 et seq.  That is, the party must first file corrective documents with the Assignment Recordation Branch, pay the recordation fees necessary to correct the error, and notify the Trademark Operation in writing that the corrective documents have been recorded.

Prior to registration, a request for correction of the "Ownership" field in the Trademark database should be made in an amendment 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 a request for correction of the "Ownership" field is filed between the issuance of the notice of allowance and the submission 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.

After registration, a request for correction of the "Ownership" field should be submitted in writing to the Post Registration Section in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. §2.174.  See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.

504.04   Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003

The automatic updating procedures discussed in §§504.01 through 504.03 apply to all assignments, mergers, and name changes recorded in the Assignment Recordation Branch on or after November 2, 2003, even if the request for recordation was filed before November 2, 2003.

These procedures do not apply to assignments, mergers, or name changes that were recorded in the Assignment Recordation Branch prior to November 2, 2003.  For documents recorded prior to November 2, 2003, the new owner must notify the Trademark Operation in writing of the change of ownership and request that the Trademark database be updated manually.  37 C.F.R. §3.85.

504.05   Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection

The procedures discussed in §§504.01 through 504.04 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States.  Changes of ownership, including a change of owner name, of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the IB.  The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register.  The USPTO's Trademark database will be automatically updated to reflect any change of ownership that is recorded in the International Register.  See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.