Recording an assignment with the Assignment Recordation Branch (Assignment Branch) may automatically update the ownership information for those registrations and applications in the Trademark database. However, an automatic update of ownership information does not always occur.
Circumstances for Automatic Update
An automatic update in the ownership information will occur when the following set of circumstances exist:
- The conveyance type selected on the cover sheet is one of the following:
- Assignment of entire interest and goodwill;
- Nunc Pro Tunc Assignment;
- Merger; or
- Name Change
- Merger and Name Change; or
Any other selection for a conveyance type from the ETAS form or the insertion of any additional wording on the paper form will NOT permit an automatic update;
- The execution date of the document to be recorded is later than, and not the same as, the execution date of any other document that has been recorded previously. Recording multiple documents with the Assignment Branch with the same execution date will likely prevent an automatic update of the ownership records;
- The application is not in a locked blackout period. The blackout period includes:
(a) for Section 1(b) intent to use applications:
- Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette; and
- Approximately three weeks before the application is scheduled to issue
(b) for Section 1(a) use-based applications and Section 44 applications based on foreign registrations:
- 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 ; and
- The maximum number of changes to ownership has not been reached. The maximum number of ownership changes before publication is nine (9) and between publication and registration of the mark is nine (9).
If all the conditions outlined above are met and the ownership information is not automatically updated, you can e-mail the Trademark Operation to have the ownership information updated at TMPostPubQuery@USPTO.GOV. In the e-mail please identify the application or registration that was not automatically updated.
If, however, the assignment does not automatically update because the above conditions are not met, you can have ownership information changed by sending a written notice to the Trademark Operation in the following ways:
Applications: If the application has not yet been approved for publication in the Official Gazette, you may submit the request to update ownership by filing a TEAS voluntary amendment. If the application has already published for opposition, you may submit your request to update ownership by filing the TEAS post-publication amendment form.
Registrations: If the mark is registered, ownership information can only be manually updated in the following ways:
- Submitting a written request as part of your maintenance document (Section 8 affidavit of continued use or Section 9 renewal application) or
- Filing a Section 7 correction request through the TEAS Section 7 request form. There is a $100 fee associated with filing a Section 7 request as a paralegal specialist in the Post-Registration Division must examine the ownership.
REMINDER re Correspondence Update
Even if your ownership information is automatically updated in the Trademark database, you must ensure that your correspondence information including any attorney information is also updated. To update your correspondence information, please file your request through the TEAS change of correspondence address form. To update any attorney information, should that be necessary, please file your request through the TEAS Revocation of Attorney and/or Appointment of Attorney/Domestic Representative form.
For more detailed information on this overall topic, please see TMEP §504.03. However, please note that the USPTO does not provide information concerning what type of assignment is necessary to transfer property or what is required for a Nunc Pro Tunc trademark assignment. The decision on what is required to be included in the underlying document supporting the transfer of a trademark is for the applicant/registrant to decide based on the particular facts surrounding the transfer.