502    Establishing Ownership of Applications or Registrations  

37 C.F.R. §3.73(a)  (Extract)

* * * The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

Section 1 or § 44 Applications. In an application or registration based on §1 or §44 of the Trademark Act, 15 U.S.C. §§1051, 1126, an assignee is not required to record the assignment in order to take an action with respect to an application or registration. However, an assignee must establish ownership in order to take action in an application or registration.  37 C.F.R. §3.73(b); TMEP §502.01.  In addition, the assignee must record the assignment (or other document affecting title) with the Assignment Recordation Branch of the USPTO to obtain a certificate of registration in the name of the assignee.  37 C.F.R. §3.85; TMEP §§502.02(a), 502.03.  Moreover, it is advisable for an applicant or registrant to record the assignment to ensure that it is valid, under §10(a)(4) of the Trademark Act, 15 U.S.C. §1060,  against subsequent purchasers for valuable consideration without notice.   See TMEP §501.03.

Section 66(a) Applications. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration, or to obtain a certificate of registration in the name of a new owner.  TMEP §§502.01, 502.02(b), 502.03.  See TMEP §501.07 regarding the assignment of extensions of protection of international registrations, and §1906.01 and §1906.01(a) regarding recording changes of ownership of international registrations with the IB.

502.01    Establishing the Right to Take Action in Application or Registration

37 C.F.R. §3.73 

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  • (b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director.  The establishment of ownership by the assignee may be combined with the paper that requests or takes the action.  Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
  • (1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment).  The documents submitted to establish ownership may be required to be recorded pursuant to §3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
  • (2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

Applications and Registrations Based on §§1 and 44 of the Trademark Act. In an application or registration based on §1 or §44 of the Trademark Act, when a party other than the owner of record attempts to take an action with respect to an application or registration (e.g., filing a response to an Office action, allegation of use under 15 U.S.C. §1051(c)  or §1051(d), request for an extension of time to file a statement of use under 15 U.S.C. §1051(d)(2),  affidavit of continued use or excusable nonuse under 15 U.S.C. §1058  ("§8 affidavit"), or renewal application under 15 U.S.C. §1059   ("§9 renewal application")), the party must establish ownership of the application or registration.  To establish ownership, the new owner must either:  (1) record the assignment (or other document affecting title) with the Assignment Recordation Branch of the USPTO, and notify the Trademark Operation that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred.  37 C.F.R. §3.73(b)(1).  The document(s) must show clear chain of title from the original owner to the party who is taking the action.

See 37 C.F.R. §3.85  and TMEP §§502.02(a) and 502.03 regarding issuance of a certificate of registration in the name of a new owner.

Section 66(a) Applications and Registered Extensions of Protection.  In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration.  The new owner does not have the option of submitting documentary evidence of ownership pursuant to 37 C.F.R. §3.73(b)(1). 37 C.F.R. §7.22.

The IB will notify the USPTO of any changes in ownership, including changes in owner name, recorded in the International Register.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  See TMEP §501.07 for further information about assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.  The document(s) must show clear chain of title from the original owner to the party who is taking the action. 37 C.F.R. §3.73(b)(1).

Part 3 of 37 C.F.R. does not apply to §66(a) applications and registered extensions of protection.  37 C.F.R. §7.22.  

502.02    Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name

502.02(a)    Applications Under Trademark Act §1 and §44

37 C.F.R. §3.85  Issue of registration to assignee.

The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office.  If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation.  The address of the assignee must be made of record in the application file.

Document Must Be Recorded with Assignment Recordation Branch.In an application under Trademark Act §1 or §44, a new owner must record the assignment, change of name, or other document affecting title with the USPTO's Assignment Recordation Branch to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85.  However, the registration will not issue in the name of the new owner, unless the ownership field in the Trademark database is updated to reflect the recorded assignment prior to approval of the mark for publication or registration on the Supplemental Register in an application based on §1(a) or §44, 15 U.S.C. §§1051(a), 1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).

Written Request to Issue Registration in Name of New Owner. Under 37 C.F.R. §3.85, a new owner bears the burden of recording and notifying appropriate USPTO personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary.  However, for some documents recording a document with the Assignment Recordation Branch will automatically update ownership in the Trademark database even if the new owner does not notify the Trademark Operation that the document has been recorded.  See TMEP §504 and §504.01 regarding the circumstances in which the Trademark database will be automatically updated.  Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §504 and §504.01, or if there is insufficient time for the Assignment Recordation Branch to process a recently recorded document for automatic updating (see TMEP §504.02), the new owner must file a written request that the certificate issue in the name of the new owner.  The new owner can search the Trademark Assignment Search system on the USPTO website to determine whether the assignment has been recorded, and can check TSDR at https://tsdr.uspto.gov/  to determine whether the Trademark database has been updated to reflect the change of ownership.  

A request that a registration issue in a new name should be directed to the examining attorney before an application is approved for publication or registration or during examination of the statement of use and must state that (1) the appropriate document(s) has been filed for recordation, (2) the applicant wants the registration to issue in the name of the new owner or the new name of the applicant, and (3) the application should be suspended pending recordation of the document(s) and updating the Trademark database with the new owner information. See below in this section regarding the proper TEAS forms to use to make this request. After filing this request, the applicant should check the Trademark Assignment Search database on the USPTO website and TSDR at https://tsdr.uspto.gov/  to confirm that the documents have been recorded and the change of ownership/name has been made. After the Trademark database is updated with the new owner information, the applicant should request the suspension be lifted using the TEAS Response to Suspension Inquiry or Letter of Suspension form. If the new owner information or name change does not automatically update in the Trademark database after the documents are recorded, the request to lift the suspension should identify the new owner or new name in the proper owner data field within the owner information section in the TEAS Response to Suspension Inquiry or Letter of Suspension form or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form.  See TMEP §505.01. See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.

Suspension. If the applicant states that a request to record a change of ownership has been filed with the Assignment Recordation Branch but the change is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney must suspend action pending recordation of the document and entry of the new owner information into the Trademark database. See TMEP §716.02(h).

Clear Chain of Title Required.  A request that a registration issue in the name of a new owner will not be granted unless documents recorded in the Assignment Recordation Branch show clear chain of title from the original applicant to the new owner.  The examining attorney must check the Assignment Recordation Branch’s database (Assignment database) to ensure that there is clear chain of title.  If the Assignment database shows clear chain of title in the new owner, the examining attorney must ensure that the Trademark database is updated, if necessary.

Example: ABC Corporation owns Application 1. ABC Corporation files an assignment of the entire interest and goodwill of the business, transferring ownership of Application 1 to DEF Incorporated. DEF Incorporated later files an assignment of the entire interest and goodwill of the business transferring ownership of Application 1 to XYZ Corporation. The Assignment database shows clear chain of title from ABC Corporation to DEF Incorporated to XYZ Corporation.

If the Assignment database does not show clear chain of title, the examining attorney must not update the Trademark database. If it is necessary to issue an Office action regarding other outstanding issues, the examining attorney should advise the applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If it is not otherwise necessary to issue an Office action, the examining attorney should enter a Note to the File in the record indicating that the Trademark database cannot be updated because there is no clear chain of title in the new owner. If the applicant does not record the necessary documents to show clear chain of title in the new owner, the registration will issue in the name of the party who has clear chain of title according to the Assignment database. See 37 C.F.R. §3.73(b).

Time for Recordation and Filing of Request for Issuance in Name of New Owner. The new owner should record the assignment and file a written request with the USPTO before the USPTO begins preparing an application for issuance of the certificate of registration. See 37 C.F.R. §3.85. Further changes to the record generally cannot be processed after the certificate issuance process begins. For an application based on §1(a) or §44, the recordation and written request should be filed before the mark is approved for publication or allowed for registration on the Supplemental Register. For an application based on §1(b), the recordation and written request should be filed before the acceptance of a statement of use.

TEAS forms. The request that a registration issue in the name of a new owner must be filed electronically through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless filing on paper is permitted (see TMEP §301.01). To notify the USPTO of a request before an application is approved for publication, the request may be submitted using the TEAS Response to Examining Attorney Office Action form, if an Office action is outstanding, or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form. If the request is filed after an application is published for opposition but before the notice of allowance or registration has issued, it should be submitted using the TEAS Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment form, and will be handled in accordance with standard procedures for processing amendments after publication. See TMEP §1505.01(a)–(f). A request to update the owner information is not necessary if the Trademark database has already been automatically updated with the new owner information. See TMEP §504.

If a proceeding regarding the application has been initiated at the Board, any request to update ownership information must be filed with the Board. See TBMP §512.03.

Correction after Registration. If, before a mark is approved for publication or registration, an applicant has recorded the appropriate document and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction.  See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.

502.02(b)    Applications Under Trademark Act §66(a)

Change of Owner Request Must Be Recorded with the International Bureau (IB) Using IB eMadrid Portal. In an application under Trademark Act §66(a), a new owner must request to record a change in ownership in the international registration by filing with the IB via the eMadrid portal. The IB will not accept requests that are not submitted on the official IB form. See TMEP §501.07 regarding assignment of §66(a) applications, §1906.01 regarding requests to record ownership changes with the IB, and §1906.01(a) regarding requirements for submitting requests to record ownership changes through the USPTO. The IB will notify the USPTO when the change of ownership, including change of owner name, is recorded in the International Register. The USPTO will update the USPTO's Trademark database "Ownership" fields only for those assignments (or other transactions affecting title) that have been recorded in the International Register. A new owner can check TSDR at https://tsdr.uspto.gov/  to determine whether the Trademark database has been updated to reflect a change in ownership that has been recorded with the IB.

Written Request to Issue U.S. Registration in Name of New Owner. If the Trademark database has not been updated before the mark is approved for publication, the new owner should file a written request that the registration issue in the name of the new owner using the TEAS Response to Examining Attorney Office Action form, if an Office action is outstanding, or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form.  The request that a registration issue in the name of the new owner must be directed to the examining attorney and must state that (1) the appropriate IB form has been filed with the IB, (2) the applicant wants the registration to issue in the name of the new owner or the new name of the applicant, and (3) the application should be suspended pending recordation of the ownership change and updating of the Trademark database with the new owner information. In addition, this request must include a copy of the filing submitted to the International Bureau. TMEP §716.02(g). See below in this section regarding the proper TEAS forms to use to make this request.

After filing the request, the applicant should check the Trademark Status and Document Retrieval (TSDR) system to confirm that the change of ownership has been made to the Trademark database. Once the USPTO database is updated with the new owner information, the applicant should request the suspension be lifted using the TEAS Response to Suspension Inquiry or Letter of Suspension form and include in the request the new owner’s legal entity type and citizenship or state of incorporation or organization (for U.S. assignees), or country of incorporation or organization (for foreign assignees). See 37 C.F.R §2.32(a)(3); TMEP §§803.03-803.04.  If the assignee is a domestic partnership or domestic joint venture, the request must set forth the names, legal entities, and national citizenship (or state or country of organization or incorporation) of all general partners. If the assignee is a sole proprietorship, the U.S. state or foreign country of organization of the sole proprietorship and the name and citizenship of the sole proprietor must be provided. See 37 C.F.R §2.32(a)(3); TMEP §§803.03-803.04. See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.

Suspension. If the applicant states that a request to record a change of ownership has been filed with the IB but the change is not yet recorded, includes a copy of the request to record the change of ownership, and the application is in condition to be approved for publication, the examining attorney must suspend action pending recordation of the ownership change and entry of the information into the Trademark database.  See TMEP §716.02(h).

TEAS forms. After the request to record the change of ownership is filed with the IB using the correct IB form, the request that the U.S. registration issue in the name of the new owner must be filed electronically through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless filing on paper is permitted (see TMEP §301.01). To make the request to issue the U.S. registration in the new owner name before an application is approved for publication, the request may be submitted using the TEAS Response to Examining Attorney Office Action Form, if an Office action is outstanding, or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form. If the request is filed after an application is published for opposition, it should be submitted using the TEAS Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment form, and will be handled in accordance with standard procedures for processing amendments after publication. See TMEP §1505.01(a)-(f). A request to update the owner information is not necessary if the Trademark database has already been automatically updated with the new owner information. See TMEP §504. If the Trademark database has not been updated before the mark is approved for publication, the request to lift the suspension should identify the new owner or new name in the proper owner data field within the owner information section in the TEAS Response to Suspension Inquiry or Letter of Suspension form or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form. A request to update the owner information in the U.S. application is not necessary if the Trademark database has already been updated with the new owner information. See TMEP §504.

If a proceeding regarding the application has been initiated at the Board, any request to update ownership information must be filed with the Board. See TBMP §512.01.

Correction after Registration. If, before a mark is approved for publication, an applicant has recorded a change of ownership in the international registration with the IB, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction.  See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.

502.02(c)    Examining Attorney’s Action Regarding Assignment

Check Trademark Database. If, prior to approval for publication for opposition or registration on the Supplemental Register in an application under §1 or §44, or prior to acceptance of a statement of use in an application under §1(b), the applicant advises the examining attorney, or the examining attorney learns through another source, that an assignment has been recorded, the examining attorney must check the Assignment database to ensure that there is clear chain of title, and must ensure that the Trademark database is updated before approving the mark for publication or registration.

Issue Office Action. In general, the examining attorney should only issue an Office action questioning whether an assignment has occurred if an entity attempts to take action with respect to the application and USPTO records show ownership in another party. In this situation, the assignee must establish entitlement to take the action; applicant can either record an assignment or submit proof of the assignment.  37 C.F.R. §3.73(b); TMEP §502.01.

Suspension. During initial examination, the examining attorney must not suspend action or delay issuance of a final action to await recordation of a document.  However, if the applicant submits a request indicating that the relevant document has been submitted for recordation and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney must suspend action pending recordation of the document and entry of the new owner information into the Trademark database. See TMEP §716.02(h).

Similarly, during examination of the statement of use in an application under §1(b), the examining attorney must withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant’s new name has been entered in the Trademark database.  If the application is in condition to be approved for publication or registration, the examining attorney must suspend action pending recordation of the document and entry of the information into the Trademark database.  See TMEP §716 regarding suspension. Id.

502.03    Issuance of New Certificate to Assignee of Registrant

Registrations Under Trademark Act §1 and §44.  In registrations that issued based on applications under Trademark Act §1 or §44, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner (or in the registrant’s new name), if the new owner/registrant:  (1) records the appropriate document (e.g., assignment document, change of name) with the Assignment Recordation Branch; (2) files a written request that a certificate of registration be issued in the new owner’s name using the TEAS Section 7 Request for Amendment or Correction of Registration Certificate form that includes the current domicile street address and email address of the new owner (37 C.F.R §§2.23(b), 2.189 ); and (3) pays the required fee (37 C.F.R. §§2.6(a)(8), 3.41 ).  The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or an attorney qualified to practice under 37 C.F.R. §11.14  (a qualified U.S. attorney) must sign the request for a new certificate.  15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a); 3.85.  The recorded document(s) must show clear chain of title from the original registrant to the party requesting issuance of a new certificate.  See TMEP §503.03 regarding the requirements for recording.

Upon request and payment of the appropriate fee (see TMEP §111), the Certified Copy Center of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database. The certified copy will not show any transfer of ownership that has not been recorded with the Assignment Recordation Branch.

See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of a §8 affidavit in the name of the new owner of a registration, and TMEP §1606.06 regarding renewal in the name of the new owner.

Registered Extensions of Protection of International Registrations to the United States.  In a registered extension of protection, the new owner must file a request to record a change of ownership in the internation registration with the IB via the eMadrid portal available at https://madrid.wipo.int/. See TMEP §501.07 regarding assignment of §66(a) applications and §1906.01 and §1906.01(a) regarding requests to record ownership changes with the International Bureau. The IB will notify the USPTO when the change of ownership, including a change of owner name, is recorded in the International Register. The USPTO will update the USPTO's Trademark database "Ownership" field only for those assignments (or other transactions affecting title) that have been recorded in the International Register.  

The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner:  (1) requests to record a change in ownership in the international registration by filing with the IB via the eMadrid portal available at https://madrid.wipo.int/; (2) files a written request with the Post Registration Division using the TEAS Section 7 Request for Amendment or Correction of Registration Certificate form that a certificate of registration be issued in the name of the new owner and includes the current domicile street address and email address of the new owner and the new owner’s legal entity type and citizenship (37 C.F.R §§2.23(b), 2.32(a)(2)-(a)(3), 2.189 ); and (3) pays the required fee (37 C.F.R. §2.6(a)(8) ).  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 U.S. attorney must sign the request for a new certificate.  15 U.S.C. §1057(d); 37 C.F.R. §2.171(a).

Upon request and payment of the appropriate fee (see TMEP §111), the Certified Copy Center of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database.  The certified copy will not show any transfer of ownership that has not been recorded with the IB.

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