503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
The USPTO will only communicate with the applicant or registrant, if unrepresented, or the applicant’s or registrant’s qualified U.S. attorney, if represented at the correspondence address listed in the Trademark database. See 37 C.F.R. §2.18(a)(1) -(2). However, the USPTO considers the recognition of a qualified U.S. attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1); TMEP §604.03.
If an assignment document is recorded with the Assignment Recordation Branch that includes a new owner and/or attorney address, the USPTO will not change the correspondence address in the Trademark database. The mere inclusion of a new owner and/or attorney address on documents filed with the Assignment Recordation Branch does not effect a change in the correspondence address in the Trademark database, even if the ownership information is automatically updated in the Trademark database.
The USPTO will change the correspondence address when the new owner or its attorney files (1) a separate request to explicitly change the owner and/or attorney address using the TEAS Change Address or Representation form, or submitted on paper, if permitted (see TMEP §301.01) or (2) a properly signed TEAS communication (e.g., a response to an Office action or statement of use) bearing a new owner’s and/or attorney’s correspondence address. See TMEP §609.02(f) for more information regarding correspondence after recordation of a change of ownership, and §504 regarding automatic updating of ownership information in the Trademark database after recordation of a document with the Assignment Recordation Branch.