[E-trademarks] Recording Assignment After Non-Automatic Update of Ownership

Fri Apr 5 15:29:12 EDT 2024

Having seen various non-sequential assignments in the assignment database on multiple occasions I can certainly vouch for that.  The only time it comes up is if you file something on behalf of the true owner with the regular examiner corps—you may get an objection that the declaration/whatever was not filed by the owner of the registration, at which point you can point them to the reel and frame number of the appropriate assignment.

Kevin Grierson
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
[Mobile:]
  757-726-7799<tel:757-726-7799>
[Fax:]
  866-521-5663<fax:866-521-5663>
[Email:]
  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Friday, April 5, 2024 3:13 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.com>
Subject: Re: [E-trademarks] Recording Assignment After Non-Automatic Update of Ownership

EXTERNAL EMAIL
Assignment division doesn’t confirm chain of title. Will not be an issue.
Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.Com<mailto:Susan.Crane at wyndham.Com>

On Apr 5, 2024, at 1:48 PM, Steve Zemanick via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Colleagues, I recorded a type of document (Letters of Administration) with the assignment division that did not result in the automatic update of ownership information for a given registration. The regs say (TMEP 505. 02) you can update the
ZjQcmQRYFpfptBannerStart
This Message Is From an External Sender
Do not click links or open attachments unless you recognize the sender and know the content is safe.
    Report Suspicious  <https://us-phishalarm-ewt.proofpoint.com/EWT/v1/Nf401RNTQFE14GfWW3o!kEaLK7Etw0E7IMs3u5Mnv_b-BnOpD0XlUyTNtdVZGR_-AlZxwTc0owiGAaXq-HNiFcop5sLvm6vg12vu4NfzfMFyyEqeTk8sFXH_EbGPUTUHpjlQgIe_6LhPMqghIzQYXZ_PTMmswu6DFQ$>   ‌
ZjQcmQRYFpfptBannerEnd
Colleagues,

I recorded a type of document (Letters of Administration) with the assignment division that did not result in the automatic update of ownership information for a given registration.  The regs say (TMEP 505.02) you can update the database in this situation by filing a Sec 7 or simply by including the new owner information as part of a post registration filing, but is silent about what happens if you try to record a subsequent assignment with the assignment division from the new owner that is not currently identified as the record owner in the TM database.

Has anyone run into this scenario – can I file an assignment from the owner identified in the last recorded transer, but not listed as record owner in the TM database?

Steve Zemanick
Four Reasons Legal
8074 E 34th Ave
Denver, CO 80238
steve at fourreasonslegal.com<mailto:steve at fourreasonslegal.com>
720.937.6599

CONFIDENTIAL COMMUNICATION
Communication from this firm normally contains confidential and privileged material, and is for the sole use of the intended recipient.  Use or distribution by an unintended recipient is prohibited, and may be a violation of law. If you believe that you received this in error, please do not read it or any attachments.  Please delete the communication and its attachments, and any copies that may exist, and inform the sender that you have done so. Thank you.

--
E-trademarks mailing list
E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>
https://urldefense.com/v3/__http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com__;!!Nf401RNTQFE14GfWW3o!jrnx3rbciVSeRekZJFc688v097PQgDb6MSa3pa1SGBFn1NEzcUV6_TTB3_0cPvbZnvKWQSgGqDHMDcZA92q1wRQkETJDavs$<https://urldefense.com/v3/__http:/oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com__;!!Nf401RNTQFE14GfWW3o!jrnx3rbciVSeRekZJFc688v097PQgDb6MSa3pa1SGBFn1NEzcUV6_TTB3_0cPvbZnvKWQSgGqDHMDcZA92q1wRQkETJDavs$>
This email message (including all attachments) is for the sole use of the intended recipient(s) and may contain confidential information. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. Unless otherwise indicated in the body of this email, nothing in this communication is intended to operate as an electronic signature and this transmission cannot be used to form, document, or authenticate a contract. Wyndham Hotels and Resorts and/or its affiliates may monitor all incoming and outgoing email communications in the United States, including the content of emails and attachments, for security, legal compliance, training, quality assurance and other purposes.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240405/6635b86f/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 285 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240405/6635b86f/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 452 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240405/6635b86f/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 394 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240405/6635b86f/attachment-0002.png>