504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database

Except in the limited circumstances set forth in TMEP §504.01, the USPTO will automatically update the ownership information in the Trademark database of registrations and pending applications when one of the following documents is recorded with the Assignment Recordation Branch:

Assignment of entire interest and goodwill;
Nunc Pro Tunc Assignment of entire interest and goodwill;
Merger;
Change of Name;
Merger and Change of Name; or
Entity Conversion.

In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the new owner. In all other situations, the new owner must separately notify the Trademark Operation in writing that ownership has changed in order to update the ownership information in the Trademark database.

To ensure that the Trademark database is automatically updated, the party filing the change-of-ownership documents should identify the "Nature of the Conveyance" by checking the "Assignment," "Nunc Pro Tunc Assignment," "Merger," "Change of Name," "Merger and Change of Name," or "Entity Conversion" box in the "Nature of Conveyance" field and should not check the "Other" box.

The Trademark database will show only the last recorded owner, not the complete chain of title. The complete chain of title can be obtained from the Trademark Assignment Search database on the USPTO website. The "Ownership" field in the Trademark database will be automatically updated whether or not the records of the Assignment Recordation Branch show clear chain of title transferring ownership to the last recorded owner. The Trademark database will include the reel and frame number and execution date of the recorded document, as well as a notation to "Check Assignments." Examining attorneys must check assignment records to ensure that the owner of record in the Trademark database has clear chain of title. If there is no clear chain of title, the ownership information should be changed to the last owner with clear chain of title and a Note to the File should be entered in the record to document the change.

Trademark owners can search the Assignment database to determine whether an assignment has been recorded and can check TSDR at https://tsdr.uspto.gov/ to determine whether the Trademark database has been updated.

Filing Multiple Assignments with the Same Execution Date on the Same Date. When multiple assignments with the same execution date are filed on the same date, the ownership information in the Trademark database will not be automatically updated. See the note in TMEP §504.01 for further information.

Automatic updates to the ownership information will not automatically update the correspondence address in the USPTO records. A separate written request to change the correspondence address must be filed. See TMEP §503.01(b) for more information.

504.01 Circumstances in Which Trademark Database Will Not Be Automatically Updated

In the circumstances discussed below, the USPTO will not automatically update the Trademark database to show the change in ownership. In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark database be updated to show title in the new owner. 37 C.F.R. §3.85; TMEP §502.02(a)-(b), 502.03. See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP § 505.02 regarding requests to update ownership information after registration.

(1) Execution Date Conflicts with Previously Recorded Document. If a previously recorded assignment, merger, change of name, or any other recorded document for the same application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark database will not be automatically updated. USPTO personnel will have to review the assignment records and update the database manually.
Filing Multiple Assignments with the Same Execution Date on the Same Date. When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark database is not automatically updated. USPTO personnel must manually update the ownership information after reviewing the entire chain of title to identify the proper owner. This review is done when a written request to update ownership information is filed in accordance with TMEP §505. Therefore, information regarding the proper order of the multiple transfers should be included in the written request to the Trademark Operation so that proper chain of title may be determined and the ownership record updated accordingly in the Trademark database.
(2) Blackout Period: Ownership of Pending Applications and Registrations Cannot Be Updated During Certain Time Periods. The Trademark database cannot be automatically updated to show a change of ownership in the following circumstances:
- (a) For §1(a) and §44 applications:
  - Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette; and
  - Approximately three weeks before the registration is scheduled to issue.
- (b) For §1(b) applications:
  - Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette;
  - Approximately three weeks before the Notice of Allowance is scheduled to issue; and
  - After the SOU is accepted, approximately three weeks before the registration is scheduled to issue.

In addition, for all applications and registrations, the database cannot be automatically updated if the application or registration is involved in a Trademark Trial and Appeal Board (Board) proceeding, or for pending applications, if a notice of extension of time to file an opposition has been filed with the Board.

(3) Maximum Number of Ownership Changes. The Trademark database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
- Prior to publication – up to nine changes of ownership.
- Between publication and registration – up to nine additional changes of ownership.

In the situations described above, new owners must file a written request with the Trademark Operation, as set forth in TMEP §505, to have the Trademark database updated or, if there is a Board proceeding, the request should be filed with the Board. See TMEP §504 regarding the types of assignment documents for which the USPTO will automatically update the ownership information in the Trademark database.

504.02 Processing Time for Automatic Updating

Recording a change of ownership does not simultaneously and automatically update the Trademark database with the new owner information. The process for automatically updating the Trademark database requires that the Assignment Recordation Branch: (1) record the document transferring title in the Assignment database; and (2) extract the trademark assignment information from the Assignment database and send it electronically to the Trademark Operation for automatic updating. The Assignment Recordation Branch will extract trademark assignment information from the Assignment database and transmit it to the Trademark Operation once a week.

To expedite recordation with the Assignment Recordation Branch, new owners are encouraged to file requests for recordation electronically through Assignment Center on the USPTO website at https://assignmentcenter.uspto.gov/.

If a trademark owner wants the Trademark database updated within a certain time frame, and there is insufficient time for the Assignment Recordation Branch to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation in writing of the change of ownership. 37 C.F.R. §3.85; TMEP §§502.02(a)-(b), 502.03. Trademark owners can search the Trademark Assignment Search database on the USPTO website to determine whether an assignment has been recorded, and can check the Trademark Status & Document Retrieval (TSDR) system at https://tsdr.uspto.gov/ to determine whether the Trademark database has been updated.

504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

In the situations set forth in TMEP §504, the Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has clear chain of title. If the Trademark database is automatically updated to show ownership of an application or registration in a party who does not have clear chain of title as evidenced by the Assignment database, the owner of the application or registration may file a written request to have the "Ownership" field in the Trademark database corrected. The USPTO will grant a request for correction of the "Ownership" field if:

(1) The Trademark database was automatically updated to show ownership in a party who does not have clear chain of title according to the Assignment database; and
(2) At the time the Trademark database was automatically updated in the name of the incorrect party, the Assignment database showed clear chain of title in the party requesting correction of the "Ownership" field in the Trademark database.

The correction of the Trademark database will not be automatically reflected in the Assignment database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06-503.06(f) for correcting errors in the Assignment database.

Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed for recordation, transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Recordation Branch records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its database, upon ABC Corporation’s request, because the Assignment database does not show clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment database shows clear chain of title in ABC Corporation.

In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06-503.06(f). That is, the party must first file corrective documents with the Assignment Recordation Branch, pay the recordation fees necessary to correct the error, and notify the Trademark Operation in writing that the corrective documents have been recorded.

Prior to registration, a request for correction of the owner information in the Trademark database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01(a)-1505.01(f). In a §1(b) application, if a request for correction of the owner information is filed between the issuance of the notice of allowance and the submission of a statement of use, such a request may be entered during this period with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. Alternatively, the request can be made when filing the statement of use or a request for extension of time for filing a statement of use. See 37 C.F.R. §§2.77, 2.146; TMEP §§1107–1107.01.

After registration, a request for correction of the owner information should be submitted in writing to the Post Registration Section in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. §2.174. See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.

504.04 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection

The procedures discussed in TMEP §504.01 through §504.03 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States. Changes of ownership, including a change of owner name, of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the IB. The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register. The USPTO's Trademark database will be automatically updated to reflect any change of ownership that is recorded in the International Register. See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and §1906.01 and §1906.01(a) for information about recording changes of ownership of international registrations with the IB.