Steps When Confronted with an Assignment Against Your Property Filed by Another Party
1. Contact the party that improperly filed the assignment against your property. Ask them to file a corrective assignment with the Assignment Recordation Branch (Assignment Branch).
2. If the corrective assignment is filed and recorded, the Assignment Branch will record the assignment against the correct property and remove any pointers from your property to the previously recorded incorrect assignment document. [The assignment will remain at the reel and frame where it was recorded originally but when one searches your property the assignment will not be associated with your property.]
If the party that originally recorded the document will not file the corrective assignment or that party cannot be found, 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.
1. You may file a document with the Office of the Deputy Commissioner for Trademark Examination Policy requesting that the pointers to your property be removed. The document must detail the erroneous information and provide the reel and frame number where the document is recorded, and ask that the recording not be associated with the owner’s property. This request can be faxed to 571-273-8950.
NOTE: This will only be granted if the current evidence of record clearly demonstrates that the assignment recorded against your property was the result of a typographical error in identifying the property and no proper chain of title exists to the party who filed the assignment against your property.
This request will not be granted if there is a dispute regarding ownership.
2. You must record your own paperwork with the Assignment Branch to correct the record. You must use this approach 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. In this case, you must do the following:
a. File a complete cover sheet for recordation. With the cover sheet you must include a supporting declaration or affidavit from someone with firsthand knowledge of the facts stating why the previously recorded document should not be considered against your property, provide the reel and frame number where the original cover sheet and underlying document is recorded, and pay the required recordation filing fee of $40.
i. On the cover sheet, identify the true owner of the property in both the assignee (name of the receiving party) and assignor (name of the conveying party) fields; and
ii. On the cover sheet, identify in the “nature of conveyance” field that you are filing a “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).
Note: 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 gain ownership of the application or registration by filing an assignment document (or other document affecting title), the other party’s recourse either is to (1) record an affidavit or declaration (as explained above) with the Assignment Recordation Branch in support of its position, or (2) resolve the issue in the courts. Once a decision from a court is reached, a certified copy of the court order may be submitted to the USPTO and the USPTO will take appropriate action in accordance with that order. 15 U.S.C. § 1119.
As noted above, the USPTO’s recordation of documents purporting to affect chain of title is a purely ministerial act and is not 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).
Updating the Trademark databases-TRAM and TSDR
Finally, if the ownership information has been incorrectly changed in the USPTO electronic database due to the assignment filed by another, you should send a written request to the USPTO to have the records changed back to the last listed owner who had a clear chain of title in the property. This request can be submitted by sending an e-mail to TMFeedback@uspto.gov.
NOTE: While taking the step of e-mailing TMFeedback@uspto.gov may change the ownership records in the USPTO databases, this will not remove the records that are currently recorded against the property with the Assignment Recordation Branch. For actual removal, you must do the steps outlined in the earlier sections, above.