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.