1906.01(a) Change in Ownership of International Registration
The IB will record a change in ownership by assignment, merger, court decision, or operation of law at the request of the holder, the Contracting Party of the holder, or an interested person. Article 9; Common Reg. 25(1)(a)(i). The change may relate to some or all of the goods/services in some or all of the designated Contracting Parties. A fee is required.
Most requests to record changes of ownership must be filed directly with the IB. 37 C.F.R. §§7.22 and 7.23. Form MM5 is available on the IB website at http://www.wipo.int/madrid/en/ for that purpose. The IB does not require copies of assignments or other supporting documents. See TMEP §1906.01(a)(i) regarding the limited circumstances in which a request to record a change in ownership may be filed with the IB through the USPTO.
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.
No other requests to record changes of ownership can be filed through the USPTO. 37 C.F.R. §§7.22 and 7.23.
A request to record a change of ownership filed through the USPTO must also 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 United States 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.
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 use the official IB form MM5 available on the IB website at: http://www.wipo.int/madrid/en. The IB will not accept paper requests that are not presented on the official IB form. The form cannot be handwritten. Comm Reg. 25(1)(a); Madrid Admin. Instr. §6(a). The holder should complete the form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service.
The completed form submitted through the USPTO must be mailed using the First Class Service of the USPS to:
Madrid Processing Unit
600 Dulany Street
Alexandria
Virginia
22314-579337 C.F.R. §§2.190(e) and 7.4(b). Alternatively, requests to record changes of ownership may be delivered by hand or courier to the Trademark Assistance Center at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).
Requests to record changes of ownership cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(4).
If a request to record a change of ownership is mailed to the USPTO via the Priority Mail Express® service of the USPS, the USPTO will deem that the request to record was submitted on the day it was deposited as Priority Mail Express®, provided that the holder complies with the requirements for correspondence sent by Priority Mail Express® set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Priority Mail Express®.
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.
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. Common Reg. 26(1). The holder must file a response to any notice of irregularity with the IB; the response cannot 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) and (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.
1906.01(a)(ii) International Fees for Recording Changes of Ownership of International Registration
The international fee for a request to record a change of ownership must be paid directly to the IB in Swiss currency, and may be paid either before or after submission of the request to record. 37 C.F.R. §7.7(c). However, fees paid after the document is received by the IB could result in a notice of irregularity. See TMEP §1903.02 regarding payment of international fees to the IB.
1906.01(a)(iii) Effect of Change of Ownership of International Registration
The validity of a change in ownership with respect to a particular Contracting Party is governed by the law of that Contracting Party. The office of a designated Contracting Party may declare that a change in ownership has no effect in its territory. The declaration must be sent to the IB within 18 months of the date of IB’s notification of the change. Common Reg. 27(4).
1906.01(a)(iv) Dividing an International Registration After Change of Ownership with Respect to Some but Not All of the Goods/Services
When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, Para. B.II.67.01.
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods or services, the USPTO will construe the IB’s notice as a request to divide. See 37 C.F.R. §§2.87(g) and 2.171(b)(2).
See TMEP §1110.11 regarding division of a pending §66(a) application after a partial change of ownership, TMEP §1615.02 regarding division of a registered extension of protection after a partial change of ownership, and TMEP §501.07 regarding assignment of extensions of protection.