Recording Trademark Assignments And The Specific Rules That Govern
The United States Patent & Trademark Office ("USPTO") through the Assignment Recordation Branch records trademark assignments. Requests to record assignments are filed on line through the Electronic Trademark Assignment System ("ETAS") using https://etas.uspto.gov/. A trademark applicant can create and submit a trademark assignment recordation coversheet. You must also submit legal documentation to support the assignment. Recorded assignment information will be made a public record. The official filing fee for recording a trademark assignment is $40.00 for the first trademark application or trademark registration and $25.00 for the second or subsequent trademarks for the same trademark owner. There are special requirements for a trademark application filed on a bona fide intent-to-use basis, see our page entitled Trademark Assignments for more details concerning when an assignment can be filed for an intent-to-use application.
If an error is made while filing the trademark assignment, it may be possible to contact the Assignment Division to attempt to suspend the recordation if it was not filed yet. An applicant would be required to submit a written request that the recordation be cancelled and that there be a refund for the filing fee. If the assignment has been recorded it will not be cancelled. However, if the error is due to USPTO error, the Assignment Division may correct it without a fee. To correct the assignment records, a trademark owner must follow the procedure set forth in Trademark Manual of Examining Procedure ("TMEP") §503.06- §503.06(d).
Recording a document with the Assignment Branch does not necessarily change or update the ownership of record shown in the USPTO database. There are some circumstances where the ownership information may be automatically updated, such as an assignment of the entire interest and good will, a name change, a merger, or a nunc pro tunc assignment. Under these circumstances, it is not necessary for the trademark owner to contact the USPTO regarding the change of ownership or to file a request for a new certificate of registration to issue. In all other situations, the owner must file and notify the trademark office in writing that ownership has changed in order for the database to be updated.
The Trademark Database will show the last recorded owner. If you desire more information pertaining to the chain of title then one must view the Assignment Branch Database at http://assignments.uspto.gov/assignments. Examining attorneys must check assignment records to ensure that the owner of record in the Trademark Database has a clear chain of title. For more details regarding this issue see TMEP §504. Trademark owners can conduct research on assignments independently to see if the Trademark Database has been update by going to TARR (Trademark Application and Registration Retrieval) at http://tarr.uspto.gov.
There are other restrictions on automatic updates as well. The Trademark Database will not update automatically during the following time periods: (1) between approval for publication and issuance of registration; (2) between approval of publication and issuance of notice of allowance; (3) between approval of registration and issuance of registration; (4) or if the maximum number of ownership changes occurs during certain time periods, for example prior to publication, up to nine changes of ownership are permitted and between publication and registration up to nine additional changes of ownership are allowed.
Therefore, prior to the mark registering, a request to update the ownership information should be made in writing and directed to the examining attorney. If an assignment occurs after publication it will be handled consistent with the rules for amendments after publication. If the request is made between the issuance of the Notice of Allowance and the filing of the Statement of Use, then the request will be handled at the time of the evaluation of the Statement of Use.
Lastly, if an assignment is recorded post registration, then the Post Registration Division will not update the Trademark Database unless: (1) the registrant files a written request for amendment pursuant to Section 7(d) of the Trademark Act or (2) the owner takes action to file a §8 affidavit or §9 renewal application. The registrant must file the Section 7 Request even if they are not interested in a new registration certificate, but only are interested in updating the Trademark Database. If you have questions regarding your assignment recordation, please do not hesitate to contact our office for a courtesy consultation.