Recording trademark assignments with the US Patent & Trademark Office (USPTO) is a regular occurrence in a busy trademark practice. There are a number of circumstances in which recording an assignment is advisable, with the most common being (1) a client has conveyed its trademarks to a new owner as part of a sale of all or part of its business, and (2) a client has acquired a new portfolio of trademarks as part of a transaction.
When there has been a change in ownership of a trademark for which there is an associated application or registration, it is necessary to submit the relevant assignment documents for recordation by the Assignment Recordation Branch (ARB). Once recorded by the ARB, the change in ownership will be reflected in the application and/or registration records at the USPTO, and the assignment document will be available online.
While the USPTO does not require recordation, failing to record a change in ownership may cause problems in the future; e.g., if the new owner attempts to make maintenance filings but the record lists the previous owner, the USPTO may initially refuse to accept the filing due to the ownership mismatch.
The assignment and recordation process may seem straightforward, but there are traps for the unwary that can result in the ARB issuing a notice of non-recordation, or worse, can threaten the viability of an application or registration.
First, Intent to Use applications cannot be assigned before an Amendment to Allege Use or a Statement of Use is filed, except where the assignee acquires at least that part of the applicant's business to which the trademark pertains. If there will be an Intent to Use application involved in an assignment, take a moment to think about the facts at hand and how best to accomplish the task; an improper assignment can be fatal to the application or subsequent registration.
Second, the conveyance language in the assignment document must include the transfer of goodwill associated with the trademarks. In fact, this is the only substantive issue the ARB looks for when reviewing a document. If the transfer of goodwill is not specifically referenced, the ARB will likely refuse to record the assignment.
Third, the party names and entity types in the recorded document must be identical to those in the recordation form and the application or registration record. Even slight differences, e.g. using “Limited Company” in the document and “Ltd” in the form, may result in non-recordation.
Fourth, if the assignment document is in a language other than English, you must submit the original along with an English translation signed by the individual who created the translation.
The good news is that if the ARB issues a notice of non-recordation, they provide an opportunity to re-submit the request with the necessary corrections. We have found the ARB representatives to be helpful in explaining unclear issues and offering suggestions for addressing the reasons for non-recordation.
Originally Published by 19 July 2023
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.