Chapter 500

Change of Ownership

501 Assignment of Marks

501.01 Assignability of Marks in Applications and Registrations

501.01(a) Assignability of Intent-to-Use Applications

501.01(b) Assignability of Extensions of Protection of International Registrations to the United States

501.02 Assignments Must Be in Writing

501.03 Effect of Failure to Record Assignment

501.04 Foreign Assignee May Designate Domestic Representative

501.05 Assignee Stands in Place of Applicant or Registrant

501.06 Partial Assignments

501.07 Assignment of Extension of Protection of International Registration to the United States

502 Establishing Ownership of Applications or Registrations

502.01 Establishing the Right to Take Action in Application or Registration

502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name

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

502.02(b) Applications Under §66(a) of the Trademark Act

502.02(c) Examining Attorney’s Action Regarding Assignment

502.03 Issuance of New Certificate to Assignee of Registrant

503 Recording With Assignment Services Branch

503.01 Effect of Recording a Document

503.01(a) Recording May Not Update Ownership Information

503.01(b) Recording Does Not Update Correspondence Address in Trademark Database

503.01(c) Recording is Not a Determination of Validity

503.01(d) Recording Does Not Constitute Response to Office Action

503.01(e) Conditional Assignment

503.02 Documents That the Office Will Record

503.03 Requirements for Recording

503.03(a) Formal Requirements for Documents

503.03(b) Supporting Documents

503.03(c) English Language Requirement

503.03(d) Fee for Recording

503.03(e) Cover Sheet

503.04 Address for Submitting Documents for Recording

503.05 Recording Procedure and Recordation Date

503.06 Correction of Errors in Cover Sheet or Recorded Document

503.06(a) Typographical Errors in Cover Sheet

503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration

503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration

503.06(b) Typographical Errors in Recorded Assignment Document

503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration

503.06(d) Owner Must Notify Trademark Operation of Correction

503.06(e) Recorded Documents Not Removed From Assignment Records

503.06(f) Petitions to Correct or “Expunge” Assignment Records

503.07 “Indexing” Against Recorded Document Not Permitted

503.08 Accessibility of Assignment Records

503.08(a) Abstracts of Title

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

504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated

504.02 Processing Time for Automatic Updating

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

504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003

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

505 Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information

505.01 Request to Update Ownership Information in Pending Application

505.02 Request to Update Ownership Information After Registration