Name and Addresses of Applicant

Only the owner of the basic application and/or

registration may file an international application.

15 U.S.C.

§1141a(a)

.  The international application must include the

name, current address, and email address of the applicant.

37 C.F.R. §§7.4(a)

,

7.11(a)(2)

. The name and entity of the

international applicant must be identical to the name and entity of the

applicant/registrant in the basic application and/or registration.

37 C.F.R.

§7.11(a)(2)

On the prepopulated form in the trademark electronic

filing system, the applicant’s name cannot be changed, so the international

applicant’s name will always be identical to the name of the owner of record for the

basic application and/or registration.

When the applicant submits a free-text form in the

trademark electronic filing system or a permitted paper form (

see

TMEP §1902.02(a)

), an MPU trademark specialist will check

the Trademark database to verify that the name of the international applicant is

identical to the name of the owner of the basic application and/or registration.

If the names are not identical, the trademark

specialist will check the Assignment Recordation Branch’s database to determine

whether an assignment or other document affecting title that is not reflected in the

Trademark database has been recorded.  If assignment records do not show a clear

chain of title to the international applicant, the USPTO will notify the applicant

that the application cannot be certified.  If the records of the Assignment

Recordation Branch do show a clear chain of title, the trademark specialist will

update the “Ownership” field in the Trademark database.

Because a delay in certifying and forwarding an

international application to the IB may affect the date of the international

registration, any request to record a change in ownership of a U.S. basic application

and/or registration should be filed well in advance of the filing of the

international application, to allow sufficient processing time

date the “Ownership” field in the Trademark database.

Because a delay in certifying and forwarding an

international application to the IB may affect the date of the international

registration, any request to record a change in ownership of a U.S. basic application

and/or registration should be filed well in advance of the filing of the

international application, to allow sufficient processing time.  Requests to record

documents may be filed electronically through Assignment Center at

https://assignmentcenter.uspto.gov

or on paper.

See

37 C.F.R.

§3.25(c)

. Assignments filed electronically are recorded much

faster than assignments filed on paper.  If there is an unrecorded change in

ownership, and the international applicant does not use Assignment Center to record

the change, the USPTO may be unable to certify or forward the international

application to the IB within two months after the application is received in the

USPTO.  In this situation, the date of the international registration will be the

date of receipt of the application in the IB.

See

TMEP §1902.04

.

Applicants can search the Assignment Recordation

Branch’s database at

http://assignments.uspto.gov/assignments/?db=tm

to determine

whether an assignment or other document of title has been recorded and can search the

TSDR database at

https://tsdr.uspto.gov/

to determine whether the ownership

information in the Trademark databases has been updated.  See

TMEP

§§504–504.04

regarding automatic updating of ownership

information in the Trademark database.

If an international applicant is relying on an

assignment (or other document transferring title) that has recently been filed for

recordation, the applicant should wait until the Assignment Recordation Branch has

recorded the assignment before filing the international application to ensure that

the correct owner is reflected in the USPTO records

of ownership

information in the Trademark database.

If an international applicant is relying on an

assignment (or other document transferring title) that has recently been filed for

recordation, the applicant should wait until the Assignment Recordation Branch has

recorded the assignment before filing the international application to ensure that

the correct owner is reflected in the USPTO records.

If an international application is denied

certification because the applicant is not the same party as the owner named in the

basic application(s) and/or registration(s), the applicant may petition the Director

to review the refusal to certify. The applicant may attach a copy of the recently

filed assignment to the petition with an explanation that the assignment has not yet

been recorded by the Assignment Recordation Branch. If the petition is granted, the

international application will be reinstated with the original filing date. See

TMEP

§1902.03(a)

regarding petitions to review refusal to

certify.