How to record trademark assignments with USPTO?

Introduction

Recording a trademark assignment with the United States Patent and Trademark Office (USPTO) is an important process that ensures the legal transfer of ownership of it. A trademark assignment refers to the transfer of ownership of a registered trademark from one party to another. This article provides an overview of the process of recording a trademark assignment with the USPTO, including why it’s important, the different types of trademark assignments, the recording fees, and how to complete the process.

What is a trademark assignment?

A trademark assignment is a formal legal agreement that facilitates the transfer of ownership of a registered trademark from one party to another. It may occur when a company is bought or sold, or when a trademark is licensed or assigned to another entity. The document includes details such as the name of the assignor (the current trademark owner), the name of the assignee (the new trademark owner), the trademark registration number, and the goods or services associated with the trademark.

Why record a trademark assignment?

Recording a trademark assignment with the USPTO provides notice to the public upon the change in ownership. It also helps to protect the legal rights of the new trademark owner and prevents others from using the trademark without permission. Failure to record a trademark assignment may result in disputes over the legal ownership of it.

Different types of trademark assignments

There are two types of trademark assignments:

1. Complete Assignment: This type of assignment transfers all rights and ownership in a trademark from the assignor to the assignee.

2. Partial Assignment: This type of assignment transfers only some of the rights and ownership in a trademark from the assignor to the assignee.

How to record a trademark assignment with the USPTO?

The process of recording a trademark assignment with the United States Patent & Trademark Office (USPTO) involves several steps:

1. Prepare the Trademark Assignment Agreement

The first step is to prepare the trademark assignment agreement. This document includes the names of both the assignor and assignee, the Trademark Registration number, and the goods or services associated with the trademark.

2. Complete the USPTO Assignment Recordation Form

Fill out the Recordation Form Cover Sheet, which can be completed online or on paper. The form is available in PDF-fillable format on the USPTO Forms page. The form requires the following information:

• Each trademark registration number and each trademark application number, if known, against which the Office is to record the document.
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed.
• The date the document was executed

3. Submit the Trademark Assignment Agreement and Form to the USPTO

Once the trademark assignment agreement and the Assignment Recordation Form have been completed, they should be submitted to the USPTO for recording. A recording fee must be paid at the time of submission.

4. USPTO to Process the Assignment

Wait for the USPTO to process the assignment request. Generally, paper-filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.

5. Check the Status

Check the Trademark Status and Document Retrieval (TSDR) after receiving the Notice of Recordation to verify that the owner’s information has been updated. If the owner’s information hasn’t been updated yet, wait one week before checking again.

Documents required for recording the trademark assignment with USPTO

When recording an assigned trademark with the USPTO, several documents must be submitted to complete the process. These documents include:

1. Trademark Assignment Agreement
2. USPTO Assignment Recordation Form
3. Certificate of Good Standing
4. Power of Attorney
5. Government-issued Identification

It is important to ensure that all documents are accurate and complete to avoid any delays or issues with the recording process.

What are the recording fees for trademark assignments?

The USPTO charges a fee for recording a trademark assignment, which can vary depending on the type of assignment being made and the number of trademarks being assigned. The fees can be found on the USPTO website.

Conclusion

In conclusion, recording a trademark assignment with the USPTO is an important step in transferring ownership of it. By following the necessary steps and submitting the required documents and recording fees, trademark owners can protect their legal rights and prevent unauthorized use of their trademarks.