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.