503    Recording with Assignment Recordation Branch

503.01    Effect of Recording a Document

37 C.F.R. §3.54  Effect of recording.

The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.  When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.

503.01(a)    Recording May Not Update Ownership Information

Recording a document with the Assignment Recordation Branch does not necessarily change or update the ownership of record shown in the Trademark database.  There are circumstances in which the Trademark database will be updated automatically upon the recordation of an assignment, change of name, or other document transferring title.   See TMEP §§504 and 504.01.  In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark database be updated manually.   See TMEP §§ 504.01 and 505.  See also TMEP §§502.02–502.03 regarding issuance of a certificate of registration in the name of a new owner.

503.01(b)    Recording Does Not Update Correspondence Address in Trademark Database

The USPTO will only communicate with the applicant or the applicant’s attorney at the correspondence address listed in the Trademark database.  If an assignment document is recorded with the Assignment Recordation Branch and it includes a new correspondence address, the USPTO will not enter the change of correspondence address or update the Trademark database.  The mere inclusion of the new correspondence address on documents filed with the Assignment Recordation Branch does not effect a change in the correspondence address in the Trademark database, even if the ownership information is automatically updated.  The USPTO will not change the correspondence address unless a separate written request is made to explicitly change the correspondence address.  See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, and TMEP §504 regarding automatic updating of ownership information in the Trademark database after recordation of a document with the Assignment Recordation Branch.

503.01(c)    Recording Is Not a Determination of Validity

The Assignment Recordation Branch does not examine the substance of documents submitted for recording.  The act of recording a document is a ministerial act, and not a determination of the document’s validity or of its effect on title to an application or registration.  The USPTO will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use under 15 U.S.C. §1051(d)(1)  or a §8 affidavit).  37 C.F.R. §3.54.

503.01(d)    Recording Does Not Constitute Response to Office Action

Recording a document with the Assignment Recordation Branch does not constitute a response to an outstanding Office action.

503.01(e)    Conditional Assignment

If an assignment is conditional on a given act or event at the time of its execution, the USPTO will view the submission of the assignment for recordation as an indication that the act or event has occurred.   See37 C.F.R. §3.56.

503.02    Documents that the Office Will Record

37 C.F.R. §3.11  Documents which will be recorded.

  • (a) Assignments of applications, patents, and registrations, accompanied by completed cover sheets as specified in §§3.28 and 3.31, will be recorded in the Office.  Other documents, accompanied by completed cover sheets as specified in §§3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
  • (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications.  Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.

The USPTO records assignments of trademark applications and registrations, accompanied by completed cover sheets.  The USPTO also records documents that affect title to a trademark application or registration, such as certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses.  Although a mere change of name does not constitute a change of legal entity, it is a proper link in the chain of title.  Documents of merger are also proper links in the chain of title.

Some instruments that relate to registered marks or to marks in pending applications may be recorded, even though they do not constitute a transfer or change of title to the mark or do not convey the entire title or interest in the business in which the mark is used.  Typically, these instruments are license agreements, security agreements, and agreements between parties limiting future extension of use of a mark with regard to the goods/services or other circumstances of use.  These instruments are recorded to give third parties notification of equitable interests or other matters relevant to the ownership of a mark.

The USPTO may also record a partial assignment of an interest in a mark.   See TMEP §501.06.

In an application under §66 of the Trademark Act or a registered extension of protection, the new owner must record any 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.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  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 §66(a) applications and registered extensions of protection.  37 C.F.R. §7.22.   See TMEP §501.07.

503.03    Requirements for Recording

503.03(a)    Formal Requirements for 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 TMEP §503.03(e).

To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website at http://etas.uspto.gov.  Documents filed electronically are recorded much faster than paper documents.  Using ETAS, 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 via the Internet.

See TMEP §503.03 regarding the requirements for recordation.

Section 66(a) Applications and Registered Extensions of Protection.  In a §66(a) application or a 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

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 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).

Documents filed through ETAS must be in TIFF or PDF format.  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).

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 eachapplication and registration against which a document is recorded, as identified in the cover sheet.  37 C.F.R. §§2.6  and 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

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.

To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website, at http://etas.uspto.gov.  Documents filed electronically are recorded much faster than paper documents.  Using ETAS, 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.

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 from the USPTO website at http://www.uspto.gov/web/forms/pto1594.pdf.  Questions regarding cover sheets should be directed to the Assignment Recordation Branch.  Contact information is provided on the USPTO website at http://etas.uspto.gov/.   See notice at 1140 TMOG 65, 69 (July 28, 1992).  Use of the USPTO’s cover sheet form is preferred, but is not mandatory.

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 and address of the party receiving the interest;
  • The entity (e.g., individual, corporation, partnership, etc.) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, the state or country of incorporation or organization of a corporation, etc.).  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;
  • 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:

  • 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);
  • The number of applications and/or registrations identified in the cover sheet;
  • The total fee; and
  • An identification or description of the mark.

In addition, if the receiving party has designated a domestic representative ( see TMEP §§501.04 and 610), 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.

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  and 3.31(b).

503.04    Address for Submitting Documents for Recording

To expedite recordation, new owners are encouraged to file requests to record documents with the Assignment Recordation Branch electronically through ETAS, on the USPTO website, at http://etas.uspto.gov.  Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA  22313-1450.  37 C.F.R. §§2.190(c)  and 3.27.

503.05    Recording Procedure and Recordation Date

Applications and Registrations Under §§1 and 44 of the Trademark Act.  The recording of documents in the Assignment Recordation Branch of the USPTO is governed by 37 C.F.R. Part 3.

To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website, at http://etas.uspto.gov.  Using ETAS, a new owner can create and submit 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.  Documents filed electronically are recorded much faster than paper documents.  

The date of recordation is the date that the USPTO receives a document meeting the requirements for recording.   See37 C.F.R. §3.51. A document that fails to meet the identification requirements in 37 C.F.R. §3.31will not be recorded. Id. Documents not meeting other requirements for recording, e.g., missing a completed cover sheet, will retain the original filing date if the corrected documents are resubmitted within the timeframe specified in the letter returning the documents for correction. Id.

The party recording the document should carefully review the document and cover sheet for accuracy and completeness.  The USPTO only examines the materials submitted for form, to determine whether the requirements for recording ( see TMEP §§503.03(a))-503.03(e)) have been met.

If the materials submitted meet the requirements for recordation, the Assignment Recordation Branch will record the document and cover sheet.  Only the data specified on the cover sheet will be entered in the Assignment database.  After recording the document and cover sheet, the USPTO will issue a notice of recordation that reflects the data as recorded in the Assignment database.  The party recording the document should carefully review the notice of recordation.  See TMEP §§503.06(a)-503.06(f) regarding correction of errors in a cover sheet or recorded document.

Under 37 C.F.R. §3.51, the USPTO will return documents that do not meet the requirements for recording (e.g., documents submitted without a completed cover sheet, the appropriate fee, or an English translation, where applicable) to the sender for correction.  The returned documents, stamped with the original date of receipt in the USPTO, will be accompanied by a notice of non-recordation indicating that, if the returned documents are corrected and resubmitted to the USPTO within a specified period of time, the USPTO will assign the original filing date of the documents as the recordation date.  The USPTO will not extend the time period specified in the letter.  If the returned documents are corrected and resubmitted afterthe time specified in the letter, the recordation date is the date on which the USPTO receives corrected documents that meet the requirements for recording.  The certificate of mailing and transmission procedures of 37 C.F.R. §2.197  and the Priority Mail Express® procedure of 37 C.F.R. §2.198  may be used for resubmitting the returned documents, to avoid lateness due to mail delay.

If documents submitted for recording are returned unrecorded by the Assignment Recordation Branch, and the submitter believes that the documents were returned in error, he or she may file a petition to the Director under 37 C.F.R. §2.146.  See TMEP §§1702 through 1708 regarding petitions.

Applicants and registrants can search the Assignment database at Assignments on the Web  to determine whether an assignment has been recorded.

Section 66(a) Applications and Registered Extensions of Protection.  In an application under §66(a) of the Trademark Act or a registered extension of protection, the IB will notify the USPTO of any changes in ownership, including a change of owner name, recorded in the International Register, and of the date of recordation.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and 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 an international registration.  37 C.F.R. §7.22.

503.06    Correction of Errors in Cover Sheet or Recorded Document

37 C.F.R. §3.34  Correction of cover sheet errors.

  • (a) An error in a cover sheet recorded pursuant to §3.11 will be corrected only if:
  • (1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains, and
  • (2) A corrected cover sheet is filed for recordation.
  • (b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in §3.41.

Once a document is recorded with the Assignment Recordation Branch, the Assignment Recordation Branch will not remove the document from the record relating to that application or registration.   See TMEP §503.06(e).

During the recording process, the Assignment Recordation Branch will check to see that a trademark cover sheet is complete and record the data exactly as it appears on the cover sheet.  Once the document is recorded, the USPTO will issue a notice of recordation.

The party recording the document should carefully review the notice of recordation.

Typographical errors made by the USPTO will be corrected promptly and without charge upon written request directed to the Assignment Recordation Branch.  For any other error, the party recording the document is responsible for filing the documents and paying the recordation fees necessary to correct the error, using the procedures set forth in TMEP §§503.06(a) through 503.06(d).

In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB.  Such a request cannot be sent to the IB through the USPTO.  See TMEP §§1906.01-1906.01(i) for information about requests to record changes in the International Register.

503.06(a)    Typographical Errors in Cover Sheet

A party may correct typographical errors on a previously recorded cover sheet by submitting the following to the Assignment Recordation Branch:  (1) a completed new cover sheet containing the correct information; (2) a copy of the originally recorded assignment document (or other document affecting title); (3) a copy of the previously recorded, original cover sheet containing the erroneous information; and (4) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6  and 3.41 ).  37 C.F.R. §3.34.  See TMEP §503.03(e) for information about the cover sheet. The original cover sheet is required for the Assignment Recordation Branch to identify the nature of the correction. A copy of the original cover sheet may be obtained using Assignments on the Web  on the USPTO website by typing in the reel and frame number of the previously recorded assignment, clicking on the "View Recorded Assignment" icon, and printing a copy of the cover sheet.

If the corrective documents are filed electronically via ETAS, the party filing the correction should check the box titled "Corrective Assignment" in the "Nature of the Conveyance" field and fill in the mandatory fields, which include: (1) identification of the parts of the cover sheet that need to be corrected (i.e., name of receiving party, or trademark application serial number or registration number); (2) the reel and frame number where the original cover sheet is recorded; and (3) identification of the nature of the conveyance that was originally recorded (e.g., assignment of entire interest, security interest, name change, or merger).

If the corrective documents are filed on paper using the form provided by the Assignment Recordation Branch, the party filing the correction should check the box titled "Other" in the section titled "Nature of Conveyance" and, in the space provided, state the following: "Corrective assignment to correct the previously recorded assignment against Property Number ^ (insert trademark application serial number or registration number) recorded at ^ (identify the reel and frame number where the original cover sheet is recorded)."

The Assignment Recordation Branch will compare the new cover sheet containing the corrected information with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.  If the error is typographical in nature, the Assignment Recordation Branch will record the new cover sheet and correct the Assignment database. If the assignment document (or other document affecting title) cannot be recorded, the Assignment Recordation Branch will issue a notice indicating the reason for non-recordation.

If ownership information is incorrect in the USPTO’s Trademark database, see TMEP §§505–505.02 regarding requests to update ownership information in applications and registrations.

503.06(a)(i)    Typographical Errors in Cover Sheet that Do Not Affect Title to Application or Registration

If the original cover sheet contains a typographical error that does not affect title to the application or registration against which the original assignment, name change, or other interest is recorded, the Assignment Recordation Branch will correct the Assignment database and permit the recording party to keep the original date of recordation.

503.06(a)(ii)    Typographical Errors in Cover Sheet that Do Affect Title to Application or Registration

If the original cover sheet contains a typographical error that affects title to the application or registration against which the assignment, name change, or other interest is recorded, the recording party will not be entitled to keep the original date of recordation.   See TMEP §503.05.  Rather, the Assignment Recordation Branch will correct its automated records and change the date of recordation to the date on which the corrected cover sheet was received in the USPTO.

503.06(b)    Typographical Errors in Recorded Assignment Document

If there is a typographical error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for the erroneous document (e.g., the assignor) must either record a new document with the Assignment Recordation Branch or make corrections to the original document and re-record it.  If the assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration for recordation in which the assignee identifies the error and requests correction.  The affidavit or declaration must: (1) be signed by someone with firsthand knowledge of the facts and (2) identify the current owner of the property and explain why the originally recorded document was erroneous. To record the affidavit or declaration, the assignee must file: (1) a new complete cover sheet; (2) the affidavit or declaration; (3) a copy of the originally recorded document with the corrections thereto initialed and dated by the party signing the affidavit or declaration; and (4) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6  and 3.41 ).   See In re Abacab Int’l Computers Ltd., 21 USPQ2d 1078 (Comm’r Pats. 1987). See TMEP §503.03(e) for information about the cover sheet.

In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB.  Such a request cannot be sent to the IB through the USPTO.

503.06(c)    Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration

When the owner of an application or registration discovers that another party has improperly recorded an assignment, name change, or other interest against the owner’s application or registration, the owner should initially contact the party who filed the improper recording and have that party record corrective documents. See TMEP §503.06(a) regarding typographical errors in the cover sheet. If that party files corrective documents, the Assignment Recordation Branch will record the assignment, change of name, or other interest in the correct application or registration, and remove any references to the application or registration in which the improper recording was made. The assignment, change of name, or other interest will remain at the reel and frame number where it was originally recorded, but a search of the assignment records will not associate the improper recording with the owner’s property.

If the party who recorded the improper document cannot be located or is unwilling to file corrective documents, the owner must file documents to correct the record. Depending on the nature of the error that resulted in the improper recordation, the owner has two options.

If the existing evidence of record clearly demonstrates that the improper assignment, change of name, or other interest recorded against the owner’s application or registration ("owner’s property") was the result of a typographical error in identifying the application or registration number (e.g., the party who improperly filed mistakenly transposed property numbers), and the improper recording was filed by someone who is not the owner and does not have proper chain of title, the owner may submit a request to the Office of the Deputy Commissioner for Trademark Examination Policy to have any reference of the improper recording removed from the owner’s property. The owner must submit the request in writing, detailing the erroneous information and providing the reel and frame number where the document is recorded, and ask that the recording not be associated with the owner’s property. The request should be faxed to 571-273-8950. The request will only be granted if the current assignment records show on their face that a typographical error caused the recordation against the wrong property and the error was made by someone other than the owner. The request will not be granted if there is a dispute regarding ownership.

If the record as a whole shows that the application or registration number is consistent with the identified mark and nothing on the face of the recorded document indicates there was an error in identifying the application or registration number, the owner may record corrective documents with the Assignment Recordation Branch. A corrective assignment, name change, or other interest must include: (1) a new complete cover sheet containing the correct owner information; (2) an affidavit or declaration identifying the correct owner, stating why the previously recorded document was not proper, and providing the reel and frame number where the original cover sheet and underlying document is recorded; and (3) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6  and 3.41 ). See TMEP §503.03(e) for information about the cover sheet.

The affidavit or declaration must: (1) be signed by someone with firsthand knowledge of the facts; (2) identify the current owner of the application or registration; and (3) state why the document recorded against the application or registration was erroneous, and that the last correct owner or assignee has been and continues to be the owner of the application or registration.

If corrective documents are filed electronically via ETAS, the owner should check the box titled "Corrective Assignment" in the "Nature of the Conveyance" field and fill in the following required information in the fields provided: (1) identification of the parts of the assignment or change of name that need to be corrected (e.g., name of the receiving party, or trademark application serial number or registration number); (2) the reel and frame number where the original cover sheet is recorded; and (3) identification of the nature of the conveyance that was originally recorded (e.g., assignment of entire interest, change of name). The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.

If the corrected documents are filed on paper using the form provided by the Assignment Recordation Branch, the owner should check the box titled "Other" in the section titled "Nature of Conveyance" and, in the space provided, state the following: "Corrective assignment to correct the previously recorded assignment against Property Number ^ (insert trademark application serial number or registration number) recorded at ^ (identify the reel and frame number where the original cover sheet is recorded)." The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.

Whether filed via ETAS or on paper, if all the filing requirements are met in instances where nothing on the face of the recorded document indicates that there was an error in identifying the application or registration number, the Assignment Recordation Branch will record the corrected assignment or change of name in the identified application or registration, but will not remove the improper recording. However, anyone searching and reviewing the assignment records will see the corrective documents, which clarify the chain of title.

In the rare case of a dispute in ownership where one party attempts to appropriate ownership of the application or registration by filing an assignment document (or other document affecting title), the other party’s recourse is to record an affidavit or declaration (as explained above) with the Assignment Recordation Branch in support of its position. As noted above, the USPTO’s recordation of documents purporting to affect chain of title is a purely ministerial act and is not an Office determination of the document's validity or of its effect on title to an application or registration. See 37 C.F.R. §3.54; TMEP §503.01(c).

503.06(d)    Owner Must Notify Trademark Operation of Correction

Recording a corrective document with the Assignment Recordation Branch generally does not change or update the information to be corrected in the Trademark database.  The owner must also separately notify the Trademark Operation in writing that the corrective document has been recorded and identify the corrected information.

See TMEP §504.03 regarding correction of the Trademark database where it has been automatically updated to show ownership of an application or registration in a party who does not have clear chain of title as evidenced by the Assignment database, and TMEP §§505-505.02 regarding requests to update ownership information.

503.06(e)    Recorded Documents Not Removed from Assignment Records

Except in situations where typographical errors have been corrected following the procedures set forth in TMEP §503.06(c), once an assignment or other document is recorded against an application or registration, the Assignment Recordation Branch will not remove the document from the records relating to that application or registration in the Assignment database, even if the assignment or other document is subsequently found to be invalid.

The goal of the USPTO is to maintain a complete history of claimed interests in a mark.  Since the act of recording a document is not a determination of the document's validity, maintaining a complete record of claimed interests does not preclude an owner from using a mark, or from establishing its ownership of the mark in a proper forum, such as a federal court.   In re Ratny, 24 USPQ2d 1713 (Comm'r Pats. 1992).

503.06(f)    Petitions to Correct or "Expunge" Assignment Records

To correct an error in a recorded document, the owner of an application or registration should record corrective documents with the Assignment Recordation Branch, in accordance with the procedures outlined in TMEP §§503.06 through 503.06(d).

If the Assignment Recordation Branch denies the request to correct the error, the owner may file a petition to the Director under 37 C.F.R. §2.146.  See TMEP Chapter 1700 regarding petitions.

However, petitions to correct, modify, or "expunge" assignment records are rarely granted.  Such petitions are granted only if the petitioner can prove that:  (1) the normal corrective procedures outlined in TMEP §§503.06 through 503.06(d) will not provide the petitioner with adequate relief; and (2) the integrity of the assignment records will not be affected by granting the petition.

Even if a petition to "expunge" a document is granted with respect to a particular application or registration, the images of the recorded document remain in the records of the Assignment Recordation Branch.  The USPTO will delete the links to the application or registration that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or registration number in the Assignment database.  However, the image of the document remains at the same reel and frame number, and it will still appear when that reel and frame number is viewed.

503.07    "Indexing" Against Recorded Document Not Permitted

The USPTO does not process requests for "indexing" or "cross-referencing" additional trademark registration numbers or application serial numbers against a document previously recorded in the Assignment Recordation Branch.

Therefore, even when an assignment document (or other document affecting title) has already been recorded in the Assignment Recordation Branch in connection with a trademark application or registration, a party who wants to record that document against additional applications or registrations must submit the following:

  • (1) A copy of the originally recorded assignment document (or other document affecting title), a copy of an extract from the recorded document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title (this may comprise a copy of the previously recorded documents on which the Assignment Recordation Branch has stamped the reel and frame numbers at which they are recorded);
  • (2) A completed cover sheet ( see TMEP §503.03(e)) that includes the number of each additional registration and/or application against which recordation of the assignment document (or other document affecting title) is requested; and
  • (3) The appropriate recording fee (37 C.F.R. §§2.6  and 3.41 ).

The USPTO will assign a new date of recordation for the additional applications or registrations, update the Assignment database, and create an electronic record of the cover sheet and assignment document (or other document affecting title), which will become part of the official record.   See 1157 TMOG 12 (Dec. 7, 1993).

503.08    Accessibility of Assignment Records

The Assignment Recordation Branch of the USPTO maintains separate records for patents and trademarks.  15 U.S.C. §1060(a)(5); 37 C.F.R. §2.200(a)(1).

The public can search the trademark assignment records of the Assignment Recordation Branch on the USPTO website at http://assignments.uspto.gov/assignments/q?db=tm.

Assignments of trademark applications and registrations are open to public inspection upon recordation in the Assignment Recordation Branch.  See 37 C.F.R. §3.31(b)  and TMEP §503.03(e) regarding the submission of separate cover sheets for documents that include interests in, or transactions involving, both patents and trademarks.

Before 1955, documents were recorded in bound volumes.  The location of documents in these volumes is designated by "liber and page," that is, by the number of the book (liber) and the number of the page in the book.  Since 1955, documents have been recorded on microfilm, and are available for immediate inspection in the Trademark Assignment Search Room.  The location of these documents is designated by "reel and frame," that is, by the number of the reel on which they are microfilmed and the number of the frame on the reel.

All assignment records related to pre-1955 trademark records were transferred to the National Archives and Records Administration ("NARA") in 1990.  The USPTO still maintains records of all trademark assignments recorded on or after January 1, 1955.

All trademark assignment records from 1837 to December 31, 1954 are maintained and available for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746.  Assignments recorded before 1837 are maintained at the National Archives and Records Administration, 841 South Pickett Street, Alexandria, Virginia 22304.

Copies of assignment records recorded on or after January 1, 1955 may be ordered from the USPTO upon payment of the fee required by 37 C.F.R. §2.6.  An order for a copy of an assignment record should identify the reel and frame at which it is recorded in the Assignment Recordation Branch.  If the correct reel and frame numbers are not identified (e.g., the order identifies the document only by the name of the registrant and the number of the registration, or by the name of the applicant and the serial number of the application), the USPTO will charge an additional fee for the time spent searching for the document.

Requests for copies of pre-1955 trademark assignment records should be directed to NARA.  Payment of the fees required by NARA should accompany all requests for copies.  37 C.F.R. §2.200(a)(2).

503.08(a)    Trademark Assignment Abstracts of Title

Members of the public may obtain trademark assignment abstracts of title to particular registrations or applications from the Document Services Branch of the Public Records Division of the USPTO, upon payment of the fee required by 37 C.F.R. §2.6.   See notices at 1140 TMOG 65, 66 (July 28, 1992) and 1165 TMOG 13 (Aug. 2, 1994).