501    Assignment of Marks

501.01   Assignability of Marks in Applications and Registrations

15 U.S.C. §1060(a) 

  • (1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.  Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
  • (2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted.
  • (3) Assignments shall be by instruments in writing duly executed…

37 C.F.R. §3.1  (Extract)

*** Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

501.01(a)   Assignability of Intent-to-Use Applications  

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.16.

The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent "trafficking" in marks.

As a general rule, the United States Patent and Trademark Office ("USPTO") does not investigate or evaluate the validity of assignments.  Therefore, the examining attorney should issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:

    • (1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
    • (2)  All of the following conditions are present:
      • (a) The assignment is executed before the filing of an allegation of use;
      • (b) The applicant submits the assignment document for inclusion in the application record in the Trademark database, and not just to the Assignment Recordation Branch; and
      • (c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

The examining attorney should not require the submission of assignment documents to determine compliance.

If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to resolve the issue.  This statement may be entered through an examiner’s amendment.

The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application void, and any resulting registration must be cancelled.  Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); cf. Amazon Techs., Inc. v. Wax, 95 USPQ2d 1865, 1872 (TTAB 2010) (finding "the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application," more akin to a "relinquishment" of ownership rights by one joint owner than a true "assignment" to a different legal entity, and thus not prohibited under §10).  

501.01(b)   Assignability of Extensions of Protection of International Registrations to the United States

Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).  See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection to the United States, and TMEP Chapter 1900 for further information about the Madrid Protocol.

501.02   Assignments Must Be in Writing  

15 U.S.C. §1060(a)(3) 

(Extract) Assignments shall be by instruments in writing duly executed.  ***

501.03   Effect of Failure to Record Assignment  

15 U.S.C. §1060(a)(3) 

(Extract)

  • (3) * **Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution.
  • (4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.

See TMEP §§503 et seq. regarding the recordation of assignments in the Assignment Recordation Branch of the USPTO.

501.04   Foreign Assignee May Designate Domestic Representative

15 U.S.C. §1060(b) 

An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.  Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed.  If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.

37 C.F.R. §3.61 

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office.  The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee not domiciled in the United States may designate, by a document filed with the USPTO, the name and address of a domestic representative.  15 U.S.C. §§1051(e), 1058(f), 1059(c), and 1060(b); 37 C.F.R. §3.61; TMEP §610.  The USPTO encourages assignees who do not reside in the United States to designate domestic representatives.

When an assignee designates a domestic representative, the designation should be in a document separate from the assignment document.  One copy of the designation of domestic representative should be sent to the Assignment Recordation Branch with the document to be recorded.  In addition, the assignee should send a separate copy of the designation to the Trademark Branch of the USPTO ("Trademark Operation") for each registration or application to which an assignment pertains, so that a copy of the designation can be entered in each official record that is identified in the assignment document.  37 C.F.R. §2.193(g).

501.05   Assignee Stands in Place of Applicant or Registrant

15 U.S.C. §1127  (Extract)

The terms "applicant" and "registrant" embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.

37 C.F.R. §3.71(d)  Trademarks.

The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the exclusion of the original applicant or previous assignee.  The assignee must establish ownership in compliance with § 3.73(b).

An assignee, like an applicant, must be a natural or juristic person.  See 15 U.S.C. §1127 and TMEP §803.

501.06   Partial Assignments

A trademark may be owned by two or more persons (see TMEP §803.03(d)), and a co-owner may assign his or her interest in a mark.  Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.

A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business.  See VISA, U.S.A., Inc. v. Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983).  Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears.  After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration.  If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed.  See TMEP §§1604 et seq. and 1613 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 et seq. and 1614 regarding renewal.  

A trademark owner may not use an assignment to impose geographic restrictions on a registration.  This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court.  15 U.S.C. §1052(d).  See TMEP §§1207.04 et seq. and Trademark Trial and Appeal Board Manual of Procedure  ("TBMP") Chapter 1100 regarding concurrent use registration.  However, the Assignment Recordation Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration.  As noted in TMEP §503.01(c), the Assignment Recordation Branch does not examine the substance of documents submitted for recording.  The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.

A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records accurately reflect current ownership information.  In pending applications in which a partial assignment and a request to divide are filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information.  Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application.  The abstract will be viewable via the Trademark Image Capture Retrieval System ("TICRS") and the Trademark Status and Document Retrieval ("TSDR") portal on the USPTO website at http://tsdr.uspto.gov/.  The assignment information in the parent application will remain accessible via the Assignment database on the USPTO website at http://assignments.uspto.gov/assignments.  After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the Assignment database.  See TMEP §§1615 et seq. regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §§1110 et seq. regarding request to divide pending applications.

501.07   Assignment of Extension of Protection of International Registration to the United States

15 U.S.C. §1141l  Assignment of an Extension of Protection:

An extension of protection may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.

Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection of an international registration to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).

Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization ("IB").  The IB will notify the USPTO of any changes in ownership, including changes in owner name, recorded in the International Register.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the USPTO’s Trademark database to reflect these changes.

See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States.  37 C.F.R. §7.22.

See TMEP §§1110.11 and 1615.02 regarding division of an extension of protection to the United States after ownership of an international registration has changed with respect to some, but not all, of the goods/services.