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).

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.