filing trademark assignment with uspto

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Transferring ownership/ Assignments FAQs

Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

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Transferring Ownership / Assignments

• Transferring Ownership / Assignments, Procedures

The Assignment Recordation Branch in the Public Records Division processes and records assignment documents for both patent and trademark properties.

Essentially the rules:

(1) specify the minimum information about the transaction that must be submitted;

(2) require submitters to submit this information of a separate cover sheet; and

(3) specify that submissions must be legible and of such quality to permit processing; and

(4) pay the proper recording fee.

The rules permit submission of true copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

You may contact the Assignment Center customer service desk at 571-272-3350 from 8:30 a.m. to 5 pm ET Mondays through Fridays, except on federal holidays. You may e-mail questions about electronic filing to [email protected] .

Payment may be made by use of a check, credit card, money order or USPTO deposit account if submitting documents in paper. Trademark assignments submitted electronically may be paid by credit card, USPTO deposit account or electronic fund transfer (EFT). The USPTO accepts VISA, MASTERCARD, AMERICAN EXPRESS and DISCOVER credit cards.

>> see How to Pay Fees for a current fee schedule and for more about fee payments

No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

No, these forms are not mandatory. However, the USPTO strongly encourages their use. Completing the forms in their entirety ensures that all the required information for recordation has been sent to the office. The forms are available in PDF-fillable format on the USPTO Forms page , thus making them quick and easy to prepare.

When these forms are received in the USPTO, they are scanned along with the supporting documentation. The bibliographic data from the cover sheet is then entered into the PTAS system and the documents are processed.

Additional information about this page

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on November 25, 2020

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

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• Trademark Assignment Recordation
• Trademark Transfer: Everything You Need To Know
• Trademark Law
• Trademark Checklist
• Selling Trademarks
• Are All Trademarks and Names Legally Protected
• Available Trademarks
• Purpose of Trademark
• Trademark Requirements
• How to Trademark Something

Understanding Trademark Assignment Procedures

A trademark assignment procedure is a formal process that transfers ownership of a trademark or service mark from one party to another, involving a detailed agreement that outlines the terms and conditions of the transfer, including representations, warranties, and payment terms. The process requires preparing necessary documents, including the assignment agreement, bill of sale, and transfer of goodwill statement, which must be filed with the USPTO to record the change in ownership. Failure to properly record the assignment can lead to significant legal and financial consequences, making it crucial to understand the intricacies of the process to facilitate a seamless transfer of ownership and protect the new owner's rights.

Table of Contents

Understanding Trademark Assignment Agreements

A trademark assignment agreement is a contractual document that formally transfers ownership of a trademark or service mark from one party, the assignor, to another, the assignee, outlining the terms and conditions of the transfer. This agreement is vital in facilitating a seamless handover of rights and obligations associated with the mark. A detailed trademark assignment agreement should address key aspects, including the scope of the transfer, payment terms, and representations and warranties.

Prior to executing the agreement, it is imperative to conduct thorough due diligence to verify the assignor's ownership and rights to the mark. This involves reviewing trademark registration certificates, licenses, and other relevant documents. Additionally, a trademark valuation should be performed to determine the fair market value of the mark, which informs the payment terms and negotiations between the parties. A well-drafted trademark assignment agreement safeguards the interests of both parties and minimizes potential disputes arising from the handover. By understanding the intricacies of trademark assignment agreements, parties can navigate the transfer process with confidence and clarity.

Preparing Necessary Assignment Documents

To facilitate a smooth transfer of ownership, several key documents must be prepared, including the trademark assignment agreement, bill of sale, and transfer of goodwill statement. These documents serve as evidence of the assignment and are vital for establishing the new owner's rights. A detailed Document Checklist should be used to verify that all necessary documents are prepared and executed.

The trademark assignment agreement is a critical document that outlines the terms of the assignment, including the assignor's obligations and the consideration paid. The assignor must fulfill certain obligations, such as providing documentation and information related to the trademark, to facilitate a seamless transfer. The bill of sale and transfer of goodwill statement provide additional evidence of the assignment and help to establish the new owner's rights.

It is crucial to carefully draft and execute these documents to avoid any disputes or legal issues arising from the assignment. A thorough review of the documents by both parties can help to identify any potential issues and guarantee a smooth transfer of ownership. By preparing these necessary documents, parties can confirm a successful trademark assignment and avoid potential legal pitfalls.

Filing With the USPTO Requirements

Following the assignment of ownership, the new owner must file the necessary documents with the United States Patent and Trademark Office (USPTO) to record the change in ownership and update the trademark register. This filing is a critical step in the trademark assignment process, as it publicly notifies third parties of the change in ownership and verifies the new owner's rights are protected.

The required documents, including the assignment agreement and any additional supporting documents, must be submitted to the USPTO with the applicable filing fee. Currently, the USPTO fee for recording an assignment is $40 per mark, with discounts available for electronic submission. It is crucial to confirm that all documents are complete, accurate, and compliant with USPTO requirements to avoid delays or rejection of the filing.

The USPTO recommends electronic submission of assignment documents through the Electronic Trademark Assignment System (ETAS), which offers a secure, efficient, and cost-effective way to file. By filing electronically, new owners can expedite the recording process, reduce USPTO fees, and receive immediate confirmation of submission.

Potential Risks and Consequences

Failure to properly record a trademark assignment with the USPTO can lead to significant legal and financial consequences for the new owner, including potential loss of trademark rights and liabilities for unauthorized use. If the assignment is not recorded, the USPTO may not recognize the new owner as the rightful proprietor of the trademark, potentially leading to loss of rights and legal liability for unauthorized use. Furthermore, failure to record the assignment can also lead to financial penalties, such as fines and damages, for the new owner. Additionally, the new owner may be held accountable for any legal actions taken by the previous owner, further increasing legal liability. It is vital for the new owner to verify that the assignment is properly recorded with the USPTO to avoid these potential risks and consequences. Recording the assignment provides legal certainty and protects the new owner's rights in the trademark, guaranteeing that they can exercise their rights without fear of legal liability or financial penalties.

Post-Assignment Obligations and Maintenance

Once the assignment is properly recorded with the USPTO, the new owner must fulfill certain post-assignment obligations and maintenance requirements to guarantee the continued validity and enforceability of the trademark. Failure to comply with these obligations can result in the loss of trademark rights, making it essential for the new owner to understand their responsibilities.

To ensure the continued protection of the trademark, the new owner must:

• *Maintain accurate and up-to-date records of the assignment, including documentation of the transfer of ownership*
• *Conduct regular Trademark Monitoring to detect and address potential infringement or unauthorized use*
• *Ensure License Compliance by reviewing and updating existing agreements to reflect the change in ownership*
• *Timely pay maintenance fees and file required documents with the USPTO to avoid abandonment or cancellation of the trademark*

Frequently Asked Questions

Can trademark assignments be recorded outside of the united states?.

"Yes, trademark assignments can be recorded outside of the United States through International Filings with Foreign Offices, such as the World Intellectual Property Organization (WIPO), enabling global protection and recognition of assigned trademark rights."

How Do I Prove Ownership of a Trademark After Assignment?

To prove ownership of a trademark after assignment, establish a clear document chain demonstrating the ownership transfer, including the assignment agreement, recordation with the USPTO, and any subsequent assignments, maintaining a transparent and unbroken chain of title.

Can a Trademark Be Assigned to Multiple New Owners Simultaneously?

A trademark can be assigned to multiple new owners simultaneously, leading to joint ownership, where each co-owner holds fractional interests in the mark, requiring unanimous consent for decisions and potentially giving rise to complex management and enforcement issues.

Are Trademark Assignments Publicly Disclosed by the Uspto?

The USPTO maintains public records of trademark assignments, which are accessible through Public Access to Trademark Images (PATIMS) and the Trademark Status and Document Retrieval (TSDR) databases, fulfilling disclosure requirements and providing transparency.

Can a Trademark Assignment Be Revoked or Cancelled Later?

A trademark assignment can be revoked or cancelled later if legal challenges arise, such as allegations of fraud or contract breach, allowing the assignor to reclaim ownership and rights to the mark.

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