503.03    Requirements for Recording

503.03(a)    Formal Requirements for Recording Documents

Applications and Registrations Based on §1 and §44 of the Trademark Act.  All documents submitted for recording must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31.  See 37 C.F.R. §3.28; TMEP §503.03(e). Requests to record ownership documents may be made online or via paper. 37 C.F.R. §3.25(c). See TMEP §301.01 regarding the mandatory electronic filing of trademark documents and §301.02(g) regarding the exception to mandatory electronic filing of trademark documents for assignments and other ownership transfer documents.

To expedite recordation, new owners should file requests for recordation electronically using Assignment Center at https://assignmentcenter.uspto.gov/. Documents filed electronically are recorded faster than paper documents. Using Assignment Center, a party can create and submit a Trademark Assignment Recordation Form Cover Sheet by completing an online form, and attach the supporting legal documentation as an image in tagged image file format (TIFF) for submission. See 37 C.F.R. §3.25(a) -(c)(1).

See TMEP §503.04 for the mailing address for paper submissions for recordation.

Section 66(a) Applications and Registered Extensions of Protection.  In a §66(a) application or registered extension of protection, the new owner must record the change of ownership, including a change of owner name, with the IB, who will record the change in the International Register and notify the USPTO accordingly.   See TMEP §501.07.  The IB does not require supporting documents.  See TMEP §1906.01 and §1906.01(a) for information about recording changes of ownership of international registrations with the IB.

503.03(b)    Supporting Documents

General Requirements. To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted:

  • (1) A copy of the original document;
  • (2) A copy of an extract from the document evidencing the effect on title; or
  • (3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.

37 C.F.R. §3.25(a).

To record a name change, only a legible cover sheet is required.  37 C.F.R. §3.25(b).

Assignment Center Filing. Documents filed through Assignment Center must be in TIFF or PDF format and the file size no larger than 10MB. When printed to a paper size of either 21.6 by 27.9 cm (8½ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides. 37 C.F.R. §3.25(c)(1).

Paper Filing. All paper documents submitted for recordation must be submitted on white and non-shiny paper that is either 8½ by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case.  Only one side of each page may be used.  Original documents should not be submitted, because the USPTO does not return recorded documents.  37 C.F.R. §3.25(c)(2).

Documents that do not meet these requirements will not be recorded.  37 C.F.R. §3.51; see TMEP §503.05.

503.03(c)    English Language Requirement

The USPTO will not record a document that is not in the English language, unless it is accompanied by an English translation that is signed by the translator.  37 C.F.R. §3.26.

503.03(d)    Fee for Recording

All requests to record documents with the Assignment Recordation Branch must be accompanied by the appropriate fee.  A fee is required for each application and registration against which a document is recorded, as identified in the cover sheet.  37 C.F.R. §§2.6, 3.41.  The fee does not depend on the length of the document.

If the Assignment Recordation Branch determines that materials submitted for recording do not meet the recording requirements, the fee is not refunded.

503.03(e)    Cover Sheet

Cover Sheet Required. Each document submitted for recording in the Assignment Recordation Branch must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31.  Only one set of documents and cover sheets to be recorded should be filed.  37 C.F.R. §3.28.

Separate patent and trademark cover sheets should be submitted for documents that include interests in, or transactions involving, both patents and trademarks. If a cover sheet contains both patent and trademark information, any information contained therein about pending patent applications will become public record upon recordation. 37 C.F.R. §§3.28, 3.31(b).

Assignment Center Cover Sheet. Using Assignment Center, a new owner can create a Trademark Assignment Recordation Form Cover Sheet by completing an online form, and attach the supporting legal documentation as a TIFF image or PDF document for submission via the Internet. A properly completed online cover sheet satisfies the requirements below.

Paper Filing Cover Sheet. If the new owner files the assignment or name change on paper, the cover sheet must be legible.  37 C.F.R. §3.25(a). The USPTO has a trademark cover sheet form that can be downloaded at https://www.uspto.gov/sites/default/files/pto1594.pdf. Questions regarding cover sheets should be directed to the Assignment Recordation Branch, and the branch’s contact information is provided at https://assignmentcenter.uspto.gov/. See 1140 TMOG 65, 69 (July 28, 1992).  Use of the USPTO’s cover sheet form is preferred, but is not mandatory.

Cover Sheet Requirements. Under 37 C.F.R. §3.31(a), a trademark cover sheet must contain the following:

  • The name of the party conveying the interest;
  • The name, address, and email address of the party receiving the interest;
  • The entity (e.g., individual, corporation, or partnership) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, or the state or country of incorporation or organization of a corporation).  If the party receiving the interest is a domestic partnership or domestic joint venture, the names, entity, and citizenship (or the state or country of organization or incorporation) of all general partners or active members that compose the partnership or joint venture. If the party receiving the interest is a sole proprietorship, the U.S. state or foreign country of organization of the sole proprietorship and the name and citizenship of the sole proprietor;
  • A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
  • Each application serial number or registration number against which the document is to be recorded, if known.  If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
  • The name and address of the party to whom correspondence concerning the request to record the document should be sent;
  • The date the document was executed; and
  • The signature of the party submitting the document.  For a document filed electronically, the person who signs the cover sheet must either:  (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., "/Thomas O’Malley/") in the signature block on the electronic submission; or (2) sign the cover sheet using another form of electronic signature specified by the Director.

The cover sheet should also include:

  • For Assignment Center and paper filings: The entity and citizenship of the conveying party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a domestic partnership);
  • For paper filings: The number of applications and/or registrations identified in the cover sheet;
  • For paper filings: The total fee; and
  • For paper filings: An identification or description of the mark.

In addition, if the receiving party has designated a domestic representative (see TMEP §501.04), the cover sheet should include an indication to this effect.

Documents that are not accompanied by a completed cover sheet will be returned for correction.  37 C.F.R. §3.51. Corrected and resubmitted documents will retain the original filing date of the documents so long as they are returned within the time specified in the letter returning them for correction. Id.