Why File Trademark Assignments with the USPTO?

An unrecorded assignee is limited in what actions they can take before the USPTO.  Only the owner of record may take action in a trademark matter pending before the USPTO, including prosecuting an application (i.e., applying, responding to office actions or submitting statements of use) or submitting documents such as Section 8 affidavits of use to maintain a registration. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.  37 C.F.R. § 3.73 (a).

To become the owner of record, the assignee must establish ownership in compliance with 37 C.F.R. § 3.73(b), which generally requires the assignee submit documentary evidence of a chain of title from original owner to assignee. USPTO records show that  recordation of assignments, name changes, and mergers are more common around the sixth-, tenth-, and twentieth-year of registration when trademark registration maintenance documents are due.

USPTO Trademark or Patent Assignments

Most of our clients are small businesses trying to protect their trademarks or patents. We have special rates for existing clients who need assignments recorded. Please email W@Tmk.law for a quote.

 Not Just Patents can reformat your trademark assignment right legal supporting documentation into the type acceptable by the USPTO. If you do not yet have legal supporting documentation, we may be able to assist you in choosing or drafting a document for assignment.

Standard natures of conveyance that can be recorded with the USPTO (three most common types of assignments with the USPTO are in bold):

1.  Assignment of the entire interest and the goodwill (assignment from one party to another)
2.  Assignment of an undivided part of assignor's interest
3.  Nunc Pro Tunc Assignment
4.  Merger
5.  Merger and Change of Name
6.  Change of Name (change in entity name)
7.  Entity Conversion (change in entity type)
8.  Court Order
9.  Corrective Assignment
10.  Security Interest
11.  Release of Security Interest
12.  Mortgage
13.  Lien
14.  License
15.  Option
16.  Decree of Distribution
17.  Letters Testamentary
18.  Letters of Administration
19.  Court Appointment of Trustee
20.  Conditional Assignment

Assignments for the USPTO at done through ETAS (Electronic Trademark Assignment System) at https://etas.uspto.gov. (See screenshot of one of the steps below.)

The recordation of transfer of interest documents at the U.S. Patent and Trademark Office Assignment Branch is a ministerial act. It does not include a decision on the legal sufficiency or the legal effect of the document(s) offered for recordation.

Not Just Patents does not give opinions regarding the validity of the legal supporting documents or conveyances done by others but rather acts as an agent to record assignments in cases like this.

TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS Application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching

TBMP 309 Grounds Opposition/Canc.  

 Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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