How Do You Change an Owner Name or Other Information on a Trademark Application? It may require an assignment.

An owner name change may require an assignment unless it is

• Changes to correct minor clerical or typographical errors in the owner name
• Changes to correct errors in legal entity type
• Changes to correct errors related to name changes

WARNING: The Change of Correspondence Address form and the Change of Owner's Address form may not be used to change the applicant's name or to transfer ownership of an application or registration from one party to another. Those steps must be done through the Assignments Division [through ETAS].

TMEP 505.01 [October 2017]    Request to Update Ownership Information in Pending Application

Prior to registration, a request to update the ownership information in the Trademark database should be made in writing and directed to the examining attorney. To expedite processing, new owners are encouraged to file the request online using the Trademark Electronic Application System ("TEAS"), available on the USPTO website at http://www.uspto.gov/trademarks/teas/. To notify the Trademark Operation of a request before an application is approved for publication, the request may be submitted using the TEAS form entitled "Voluntary Amendment Not in Response to USPTO Office Action/Letter." If such a request is filed after an application is published for opposition but before the notice of allowance or registration has issued, it may be submitted using the TEAS form entitled "Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form," and will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01(a)-1505.01(f). If a proceeding regarding the application has been initiated at the TTAB, the request to update ownership information should be filed with the TTAB.  

In a §1(b) application, after issuance of the notice of allowance, if the Trademark database has not been automatically updated, the notification of the change in ownership should 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; TMEP §1107. To update the Trademark database prior to submitting these documents, the applicant may file a petition to the Director pursuant to Trademark Rule 2.146 to allow the change to be entered. See 37 C.F.R. §§2.77(b), 2.146; TMEP §§1107-1107.01.

See TMEP §§ 502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.

TMEP 502.02(a) [October 2017]   Applications Under §§1 and 44 of the Trademark Act

37 C.F.R. §3.85  Issue of registration to assignee.

The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office.  If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation.  The address of the assignee must be made of record in the application file.

Document Must Be Recorded with Assignment Recordation Branch.In an application under §1 or §44 of the Trademark Act, a new owner must record the assignment, change of name, or other document affecting title with the Assignment Recordation Branch of the USPTO 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)  or §1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).

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 recorded on or after November 2, 2003, 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 Assignment Recordation Branch’s database, i.e. , the Electronic Trademark Assignment System ("ETAS"), at USPTO Assignments on the Web  to determine whether the assignment has been recorded, and can check TSDR at http://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, and should state that the appropriate document has been recorded (or filed for recordation) and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant.  The request should specify the assignee’s address and set forth the assignee’s citizenship or state of incorporation or organization (for United States assignees), or country of incorporation or organization (for foreign assignees).  If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members.  See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.

If the applicant states that a request to record a change of ownership has been filed with the Assignment Recordation Branch but 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 information into the Trademark database.  See TMEP §716 regarding suspension.

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") on the USPTO website at Assignments on the Web  to ensure that there is clear chain of title.  If the Assignment database shows clear chain of title, 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 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.

To ensure proper routing and processing, the request should be filed electronically through the Trademark Electronic Application System ("TEAS"), which is available on the USPTO website at http://www.uspto.gov/trademarks/teas/. To notify the USPTO of a request before an application is approved for publication, the request should be submitted using the "Voluntary Amendment Not in Response to USPTO Office Action/Letter" form in TEAS. 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)–1505.01(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.

Note that if a proceeding regarding the application has been initiated at the TTAB, any request to update ownership information must be filed with the TTAB. See TBMP §512.03.

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.