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.