Assignments: Change of Owner & Change of Owner Name
During the examination of a pending trademark application as well as after a trademark has registered, the owner of a trademark may change for various reasons. Some trademark owners transfer their ownership of a mark to another entity, which is called an assignment. In addition, some trademark owners change their names while retaining ownership. In both instances, the USPTO advises trademark owners to record the ownership transfer (assignment) or (name change) with the Assignment Recordation Branch of the USPTO.
[Note: An applicant cannot assign an intent to use application before the applicant files an amendment to allege use under 15 U.S.C. §1051(d) of the Act, 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. 15 U.S.C. §1060; 37 C.F.R. §3.16.]
Recording an Assignment Online
To record an assignment or name change, the owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment or proof of name change. Requests to record documents in the Assignment Recordation Branch can be filed through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov. Locate the current fee schedule at How to Pay Fees to determine the current fee for assignment recordation (Trademark Services Fee Code 8521). Generally, electronically filed assignments are recorded in one business day.
PLEASE NOTE: If you make an error in the online assignment submission, contact the Assignment Recordation Branch immediately by telephone at 571-272-3350 from 8:30 a.m. – 5:00 p.m. Eastern Time. They may be able to suspend the recordation. The recordation will be suspended for two days to allow time for submission of a written letter requesting that the recordation be cancelled and that a refund be issued. However, if the assignment has been recorded, it cannot be cancelled. You must follow the procedures outlined in the Trademark Manual of Examining Procedure (TMEP) Section 503.06.
NOTE: Please be aware that "Compatibility View" is required when using Internet Explorer versions 8 and 9.
Recording an Assignment by Paper
The form for this purpose is # PTO-TM-1594 (Recordation Form Cover Sheet ). Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be sent to:
Mail Stop Assignment Recordation Branch
Director of the US Patent and Trademark Office
PO Box 1450
Alexandria, VA 22313-1450
Generally, paper filed assignments are recorded within one week of filing.
Searching Trademark Assignment database
Submit a trademark query to Assignments on the Web (AOTW).
Updating Ownership Information in Trademark Status and Document Retrieval
Generally electronically filed assignments are recorded in the Assignment Recordation Branch in one business day and paper filed assignments are recorded within one week of filing. If the assignment is of the type that is automatically updated, the Trademark records will be updated approximately one week later.
However, not all recorded assignments will automatically update the trademark ownership records. The most common reasons why the ownership records does not auto update is either because (1) the conveyance type is not one of the unique four that allows for automatic updates: assignment, nunc pro tunc assignment, merger, or change of name or (2) because the application is in a black-out period, which prevents automatic updates to the records. Please review the criteria for automatically updating the Trademark database (TSDR), as outlined in TMEP §504.
After receiving your recordation notice, please wait at least one week before checking TSDR to see if the ownership information has been automatically updated. Go to Trademark Status and Document Retrieval (TSDR), enter the serial number, and click on the Status button. Scroll down to the “Current Owner(s) Information.” If the change in the owner has not been entered, go to the “Prosecution History” and look to see if there is an entry that says “Ownership records not automatically updated.” If the records were not automatically updated, you must notify the Trademark Operation in writing so that the records can be manually updated.
If the application has not published for opposition, you may submit the request to update the owner name using the TEAS Voluntary Amendment form. If it is after publication, you may submit the request using the TEAS Post-Publication Amendment form. If it is more than four weeks after publication, it will be too late to update the record prior to registration and you will have to submit a request for correction pursuant to Trademark Act Section 7 after the mark registers.
Assignment Filed by Another Party Against Your Property
For information on the steps one should take when confronted with an assignment filed by another party against your property see http://www.uspto.gov/trademarks/notices/assignment_steps.jsp.
Other Assignment resources
For further information about recording assignments or name changes, see TMEP §§503 et seq. or call the Assignment Recordation Branch at 571-272-3350. Telephone assistance is available Monday - Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. Eastern Time.
Assignments Information & Practice Tips
- Recent Enhancements to Electronic Trademark Assignment System (ETAS) (28Jul2014)
- Updating Ownership Information After Assignment is Recorded (22Feb2013)
- Steps When Confronted with an Assignment Against Your Property Filed by Another Party (UPDATED 21Nov2013)
- Assignment Enhancements (4Oct2011)
- Record Trademarks With Customs and Border Protection (CBP) (1Oct2010)