505    Requesting Update of Ownership Information When the Trademark Database Does Not Automatically Update After a Document is Recorded

As noted in TMEP §504.01, in certain cases, the recordation of a document with the Assignment Recordation Branch does not automatically update the ownership information in the Trademark database. Therefore, the new owner must separately notify the Trademark Operation in writing that the change in ownership has been recorded, so that the ownership information is updated in the Trademark database.  See TMEP §505.01 regarding the procedures for requesting that ownership information be updated in pending applications, and TMEP §505.02 regarding the procedures for requesting that ownership information be updated after registration.

505.01   Request to Update Ownership Information in Pending Application

Prior to registration, a request to update the ownership information in the Trademark database should be made in writing and directed to the examining attorney. To expedite processing, new owners are encouraged to file the request online using the Trademark Electronic Application System ("TEAS"), available on the USPTO website at http://www.uspto.gov/trademarks/teas/. To notify the Trademark Operation of a request before an application is approved for publication, the request may be submitted using the TEAS form entitled "Voluntary Amendment Not in Response to USPTO Office Action/Letter." If such a request is filed after an application is published for opposition but before the notice of allowance or registration has issued, it may be submitted using the TEAS form entitled "Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form," and 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, after issuance of the notice of allowance, if the Trademark database has not been automatically updated, the notification of the change in ownership should be made when filing the statement of use or a request for extension of time for filing a statement of use. See 37 C.F.R. §2.77; TMEP §1107. To update the Trademark database prior to submitting these documents, the applicant may file a petition to the Director pursuant to Trademark Rule 2.146, to request a waiver of Trademark Rule 2.77 to allow the change to be entered. 37 C.F.R. §§2.146(a)(3), 2.146(a)(5), 2.148; see TMEP §1700 regarding petitions.

See TMEP §§502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.

505.02   Request to Update Ownership Information After Registration

If the new owner does not identify the assignment conveyance document properly (see TMEP §504), or in the situations described in TMEP §504.01, the Trademark database will not automatically update to show the changes in ownership. To have the Trademark database updated, the new owner must either:  (1) file a written request to amend the registration pursuant to §7(d) of the Trademark Act, 15 U.S.C. §1057(d); or (2) include the new owner information when submitting a post registration maintenance filing pursuant to §8 or §9 of the Trademark Act, 15 U.S.C. §1058 or §1059.

The TEAS form entitled "Section 7 Request for Amendment or Correction of Registration Certificate" should be used to file the request to update the ownership information in the Trademark database. See TMEP §502.03 regarding issuance of a new certificate in the name of the new owner. Thus, if the new owner of the registration is not taking a post registration action, such as filing a §8 affidavit, and wishes to update the ownership records, the owner must:

  • (1)  Record the appropriate document (e.g., assignment, change of name) with the Assignment Recordation Branch;
  • (2) File a written request that the Trademark database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
  • (3) Pay the required fee (37 C.F.R. §§2.6(a)(8) and 3.41).

15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85.  The USPTO’s Trademark records must show clear chain of title from the original registrant to the new owner.  See TMEP §502.03.