502.02(a)    Applications Under Trademark Act §1 and §44

Document Must Be Recorded with Assignment Recordation Branch.In an application under Trademark Act §1 or §44, a new owner must record the assignment, change of name, or other document affecting title with the USPTO's Assignment Recordation Branch to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85.  However, the registration will not issue in the name of the new owner, unless the ownership field in the Trademark database is updated to reflect the recorded assignment prior to approval of the mark for publication or registration on the Supplemental Register in an application based on §1(a) or §44, 15 U.S.C. §§1051(a), 1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).

Written Request to Issue Registration in Name of New Owner. Under 37 C.F.R. §3.85, a new owner bears the burden of recording and notifying appropriate USPTO personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary.  However, for some documents recording a document with the Assignment Recordation Branch will automatically update ownership in the Trademark database even if the new owner does not notify the Trademark Operation that the document has been recorded.  See TMEP §504 and §504.01 regarding the circumstances in which the Trademark database will be automatically updated.  Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §504 and §504.01, or if there is insufficient time for the Assignment Recordation Branch to process a recently recorded document for automatic updating (see TMEP §504.02), the new owner must file a written request that the certificate issue in the name of the new owner.  The new owner can search the Trademark Assignment Search system on the USPTO website to determine whether the assignment has been recorded, and can check TSDR at https://tsdr.uspto.gov/  to determine whether the Trademark database has been updated to reflect the change of ownership.  

A request that a registration issue in a new name should be directed to the examining attorney before an application is approved for publication or registration or during examination of the statement of use and must state that (1) the appropriate document(s) has been filed for recordation, (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 document(s) and updating the Trademark database with the new owner information. See below in this section regarding the proper forms to use in the trademark electronic filing system to make this request. After filing this request, the applicant should check the Trademark Assignment Search database on the USPTO website and TSDR at https://tsdr.uspto.gov/  to confirm that the documents have been recorded and the change of ownership/name has been made. After the Trademark database is updated with the new owner information, the applicant should request the suspension be lifted using the trademark electronic filing system's Response to Suspension Inquiry or Letter of Suspension form. If the new owner information or name change does not automatically update in the Trademark database after the documents are recorded, 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 Response to Suspension Inquiry or Letter of Suspension form or the Voluntary Amendment Not in Response to USPTO Office Action/Letter form.  See TMEP §505.01. 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 Assignment Recordation Branch but the change is not yet recorded, 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).

Clear Chain of Title Required.  A request that a registration issue in the name of a new owner will not be granted unless documents recorded in the Assignment Recordation Branch show clear chain of title from the original applicant to the new owner.  The examining attorney must check the Assignment Recordation Branch’s database (Assignment database) to ensure that there is clear chain of title.  If the Assignment database shows clear chain of title in the new owner, the examining attorney must ensure that the Trademark database is updated, if necessary.

Example: ABC Corporation owns Application 1. ABC Corporation files an assignment of the entire interest and goodwill of the business, transferring ownership of Application 1 to DEF Incorporated. DEF Incorporated later files an assignment of the entire interest and goodwill of the business transferring ownership of Application 1 to XYZ Corporation. The Assignment database shows clear chain of title from ABC Corporation to DEF Incorporated to XYZ Corporation.

If the Assignment database does not show clear chain of title, the examining attorney must not update the Trademark database. If it is necessary to issue an Office action regarding other outstanding issues, the examining attorney should advise the applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If it is not otherwise necessary to issue an Office action, the examining attorney should enter a Note to the File (also referred to as a Public Note or Notation to File) in the record indicating that the Trademark database cannot be updated because there is no clear chain of title in the new owner. If the applicant does not record the necessary documents to show clear chain of title in the new owner, the registration will issue in the name of the party who has clear chain of title according to the Assignment database. See 37 C.F.R. §3.73(b).

Time for Recordation and Filing of Request for Issuance in Name of New Owner. The new owner should record the assignment and file a written request with the USPTO before the USPTO begins preparing an application for issuance of the certificate of registration. See 37 C.F.R. §3.85. Further changes to the record generally cannot be processed after the certificate issuance process begins. For an application based on §1(a) or §44, the recordation and written request should be filed before the mark is approved for publication or allowed for registration on the Supplemental Register. For an application based on §1(b), the recordation and written request should be filed before the acceptance of a statement of use.

Electronic forms. The request that a registration issue in the name of a new owner must be filed electronically through the trademark electronic filing system, unless filing on paper is permitted (see TMEP §§301.01, 301.01(a)). To notify the USPTO of a request before an application is approved for publication, the request may be submitted using the trademark electronic filing system's 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 but before the notice of allowance or registration has issued, it should be submitted using the 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 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 §512.03.

Correction after Registration. If, before a mark is approved for publication or registration, an applicant has recorded the appropriate document and filed a proper request that the certificate issue in the name of the new owner, 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.