Trademark Assignment Recordation

A trademark assignment recordation is filed with the U.S. Patent and Trademark Office to maintain current records of trademark ownership. 3 min read updated on February 01, 2023

What Is a Trademark Assignment Agreement?

A trademark assignment agreement is a legal document that transfers a design, symbol, phrase, and/or word from the assignor (current owner) to the assignee (future owner). On the other hand, a license grants permission to use a mark without transferring the mark's ownership rights. A trademark is a valuable, intangible asset that customers use to associate quality with a brand. A trademark assignment agreement allows a business owner to transfer the goodwill of the business to another party.

What Is the Difference Between Trademark and Service Marks?

The term "trademark" is also used to refer to service marks. Service marks will identify services provided, while trademarks identify goods or products. For example, McDonald's is a service mark, while Big Mac is a trademark because it's referring to a tangible product.

A trademark assignment agreement may also be referred to as:

  • Transfer of trademark rights
  • Intellectual property assignment
  • Assignment and transfer agreement

Too much intellectual property can become a burden on a business. For example, the costs associated with administering the following operations may put a financial strain on the resources of the company:

  • Creating and marketing the final product
  • Defending against third-party claims
  • Directing capital towards maintaining registrations

Basic Elements of a Trademark Assignment Agreement

There are 10 basic elements that every trademark assignment agreement should include:

  • A formal written document (not oral)
  • An effective date that specifies when the transfer occurs
  • A description of the trademark, including the trademark number if it's been registered with the U.S. Patent and Trademark Office (USPTO)
  • Identification of the assignor
  • Identification of the assignee
  • How much consideration is being transferred to the assignor for the trademark
  • Guarantee from the assignor that they are the owner and have the right and authority to transfer the mark
  • Signatures from both the assignor and assignee
  • Notarization of the agreement if you're expecting to register the mark in a foreign country
  • Identification of the amount of goodwill included in the transfer

Other topics that should be considered when creating an assignment agreement include:

  • Are there any coexisting agreements that are imposable on legal successors?
  • What is the geographic scope of the assignment?
  • Are there any rights under third-party contracts?
  • Are there any security interests or licenses previously granted by the assignor that should be released or addressed?
  • Who is responsible for paying the recordation fee and recording the assignment?
  • Are indemnification provisions desired?

How Are the Trademark Assignments Recorded?

The USPTO is responsible for recording all trademark assignments. A request to record a trademark assignment may be filed online using the Electronic Trademark Assignment System (ETAS). Trademark applicants may create and submit a cover sheet for the recording of a trademark assignment. Any legal documentation supporting the assignment should also be submitted.

There is a $40 filing fee for recording the first trademark registration or assignment. All subsequent filings for the same trademark owner cost $25. Contact the assignment division of the USPTO with a written request to stop the recording of a trademark assignment. If the assignment division is able to cancel the recording, they will refund the filing fee.

If the assignment has already been recorded, it will not be possible to have it canceled. In cases where the error is due to the USPTO, the assignment division will correct it without charging an additional fee. §503.06- §503.06(d) in the trademark manual will guide trademark owners through the necessary steps to correct the assignment records. Remember, an update that's been completed with the assignment division doesn't necessarily update or change the ownership of record within the USPTO database.

Under normal circumstances, there's no need for a trademark owner to contact the USPTO regarding a request for a new certificate of registration or a change of ownership. In all other circumstances, the owner should contact the USPTO in writing about any changes in ownership so that the database may be updated. The USPTO database displays the most up-to-date ownership information. All other inquiries regarding the chain of title may be viewed in the assignment branch database .

If you need help with trademark assignment recordation, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

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Kluwer Trademark Blog

Kluwer Trademark Blog

Worldwide trademark assignments – tips, tricks and best practices.

It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries.

Generally, it is recommended that ownership be updated with local Trademark Offices. If not, this could affect the client’s ability to enforce its rights and affect the registration of new similar marks.

After completing a worldwide assignment recordal project for a multinational corporation with applications and registrations in nearly two hundred countries, we would like to share what we have learned and provide our tips and best practices.

Preparation and planning are of primary importance. First, we suggest asking foreign associates to provide:

  • Timelines for recordal
  • Document requirements, such as whether Powers of Attorney are required
  • Appropriate signatories
  • Is notarization or legalization required?
  • Do the documents need to be translated?
  • Confirmation of details of trademarks being assigned, including details on ownership e.g., the owner name and address
  • Does the owner name and address match that on record and, if not, do these changes need to be recorded separately and prior to the assignment?
  • What if some of the marks are not of interest and the client does not wish to record the ownership change against such marks?
  • Can an assignment be recorded against pending applications?
  • Costs for providing/confirming the information and attending to all aspects of the recordals

Before preparing and arranging for any documents to be executed, determine if there are constraints on when the assignor and assignee can sign the documents. Are there deadlines to invoice? If drafting a worldwide assignment, it may be possible to create a document that is acceptable in multiple jurisdictions. Remove unnecessary information and consider having the foreign associate prepare jurisdiction-specific documents for countries with very specific requirements for recordal. Arrange for multiple original copies of the assignment to be signed as these may come in handy if difficulties are encountered with the filing of certified copies.

Document Requirements

Powers of Attorney are often required. Determine if the original is required or if it is acceptable to provide an electronic signature and transmission. In some countries, the original Certificate of Registration or Renewal is necessary. If the client does not have these records, certified copies can often be ordered. However, this could delay recordal and increase costs. In some cases, corporate documentation on the parties is requested, such as certificates of incorporation or documents showing that the signatory has authority to act on behalf of the corporation. It is often possible to arrange for additional documentation to be prepared in advance, and preferable to do so if the assignor company is going to be dissolved following the transfer.

It is not uncommon to discover that prior ownership changes were not recorded, and the owner of record may no longer exist. In some cases, there could be a typographical error on the record or an old address which will also need to be corrected. Certain countries require that the assignor’s name and address on documents filed with the Trademarks Office match exactly with the name and address on record, which could necessitate multiple recordals to correct or bring that information up to date. In other countries, ownership changes cannot be recorded against pending applications, which could result in lengthy delays for completion.

While it may be tempting to outsource assignment recordals to third party services who purport to offer heavily discounted rates, it may be advantageous to work with preferred local counsel who may be prepared to offer discounted rates and ensure fewer surprises arise based on their expertise and prior and existing knowledge of the marks.

In our experience, recordals in Australia, New Zealand, Canada, the U.S., the EU, U.K., and Singapore are easy to file and not costly. Recordals in China and certain Middle Eastern and Latin American countries can be challenging because of their highly specific document requirements for recordal. For example, certain countries go so far as to require that the passport numbers of the signatories be included in the assignment. Legalization can also be a challenge, and it is important to confirm requirements with the consulates in advance to ensure that the necessary documents are available.

Remember, Trademark Offices are constantly changing, and information obtained in the past may no longer be up to date.

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15 CFR § 280.323 - Transfer or assignment of the trademark registration or recorded insignia.

(a) A trademark application or registration which forms the basis of a fastener recordal may be transferred or assigned. Any transfer or assignment of such an application or registration must be recorded in the United States Patent and Trademark Office within three months of the transfer or assignment. A copy of such transfer or assignment must also be sent to: Director, United States Patent and Trademark Office , ATTN: FQA, 600 Dulany Street, MDE–10A71, Alexandria, VA 22314–5793.

(b) Upon transfer or assignment of a trademark application or registration which forms the basis of a certificate of recordal, the Director, USPTO , shall designate the certificate of recordal as inactive. The certificate of recordal shall be deemed inactive as of the effective date of the transfer or assignment. Certificates of recordal designated inactive due to transfer or assignment of a trademark application or registration cannot be reactivated.

(c) An assigned trademark application or registration may form the basis for a new application for recordal of a fastener insignia.

(d) A fastener insignia consisting of an alphanumeric designation issued by the Director, USPTO , can be transferred or assigned.

(e) Upon transfer or assignment of an alphanumeric designation, the Director, USPTO , shall designate such alphanumeric designation as inactive. The alphanumeric designation shall be deemed inactive as of the effective date of the transfer or assignment. Alphanumeric designations which are designated inactive due to transfer or assignment may be reactivated upon application by the assignee of such alphanumeric designation. Such application must meet all the requirements of § 280.310 and must include a copy of the pertinent portions of the document assigning rights in the alphanumeric designation. Such application must be filed within six months of the date of assignment.

(f) An alphanumeric designation that is reactivated after it has been transferred or assigned shall remain in active status until the expiration of the five year period that began upon the issuance of the alphanumeric designation to its original owner.

US Trademark Attorney

Morris E. Turek | (314) 749-4059 | [email protected]

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

trademark assignment

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the Electronic Trademark Assignment System ( ETAS ).  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

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Trademark Assignment Recordal USPTO

The Assignment Recordation is the recordal with USPTO the change of the ownership and title of the owner of the Trademark. It usually takes place when the trademark is purchased and sold between the parties and the seller and owner of the Trademark transfer the rights of ownership in favour of the buyer and new owner.  The assignment of a Trademark document is called Trademark Assignment Agreement which has to be filed with USPTO for assignment recordal. For an assignment recordal following are the requirements:

  • Complete information about the transaction
  • Information cover sheet
  • The submitter must qualify the submission i.e, he should be the owner of the Trademark
  • Pay the proper recording fee
  • True copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

Intellectual Property Logium assists to draft assignment contracts and agreements and file their recordal with USPTO.

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Madrid System: Managing International Trademark Registrations – Change Ownership

  • Monitor your registration
  • Expand protection
  • Limit goods and services
  • Renounce protection
  • Manage your representative
  • Change holder details
  • Change ownership
  • Renew your registration
  • Request a correction
  • Request continued processing
  • Record a trademark license
  • Cancel a registration
  • Request certified documents
  • Discover "Replacement"

Use "Change ownership" under eMadrid to request a total (all goods and services in all designated Members) or partial (some goods and services, in some designated Members) change in ownership. You can also appoint a new representative and add an address for correspondence at the same time.

Tip! You can request total change in ownership of multiple international registrations so long as you are transferring them all to the same new holder. For partial change in ownership, you must submit one request per international registration.

Video: How to change ownership

How does it work?

  • Select ‘Change ownership’ in eMadrid and log in with your WIPO Account .
  • Indicate whether you want to perform a total or partial change.
  • Search and select the international registration(s) for which the transaction applies.
  • Enter the details of the transferor and the transferee, and – if applicable – the name of any new representative(s) and an address for correspondence.
  • Complete all required fields and check the information submitted.
  • Select your preferred payment method (Current Account at WIPO or credit card).
  • Sign electronically and submit the request.

You do not need to provide any supporting documents when requesting a change in ownership.

What happens after you submit your request?

Important! If the WIPO Account email address you used to access ‘Change in ownership’ does not match the one we have on record for your international registration, we will send a Change in Ownership authorization request to the on-record email address of the representative, if any. Otherwise, we will send the authorization request to the on-record email address of the holder.

If we do not receive authorization within 14 days, we will cancel the request.

We will send you an email confirmation with a WIPO reference number. You can track the status of your request in real-time online using "Monitor your Registration" under eMadrid.

How much does it cost?

The fee for a total or partial change in ownership is 177 Swiss francs.

Madrid System forms

You can still request a change in ownership using downloadable Madrid System form MM5 . However, we strongly recommend that you do this online through eMadrid .

Find out more

  • Guide to the Madrid System (paragraphs 597 to 641)

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European Union Intellectual Property Office

Protect your trade marks and designs in the European Union.

Protect your intellectual property in the European Union

A recordal is an entry in the EUIPO Register , the database containing particulars of all trade marks and designs registered by the EUIPO, which implies the amendment of certain information therein.

The recordals that can be filed using online forms are shown below. To view the information for each, click on the relevant link. Only the recordals provided for in Article 111 of the European Union trade mark (EUTMR) and Article 69 of the registered Community design (RCD) regulation can be entered in the EU trade mark and registered Community design registers respectively.

For more information, please consult our Guidelines on trade marks and designs .

A total transfer is the change of ownership of a European Union trade mark (EUTM) or registered Community design (RCD) application or registration. A partial transfer is the transfer of some of the goods and / or services related to an EUTM application or registration. Partial transfer is not possible for RCDs.

For the recordal of transfer, there is no need to send documentary evidence of such transfer (e.g. a deed of assignment) when the representative who signed the request ticks on the box Representative for both parties . The representative may sign on behalf of both parties only when he or she is listed as the representative appointed by the original owner in the database and is also appointed as the representative of the new owner / beneficiary.

In all other cases, the recordal application must be accompanied by a declaration signed by both parties, evidence of the transfer, etc.

Requests for recordals of transfers may be made in respect of EUTMs or RCDs that are still at the application stage. The same rules apply .

When requesting a total or partial transfer, the final beneficiaries of the rights will be those added by the user in the section “Assignee or right beneficiary” of the online form. For example:

If there is a trade mark with two owners ‘A’ and ‘B’ and the owner ’A’ wants to transfer his rights to a future owner ‘C’ but the owner ‘B’ wants to keep his rights, then the user will have to add ‘B’ and ‘C’ in the section ‘Assignee or right beneficiary’.

trademark assignment recordal

A trade mark or trade mark application can be ‘divided’ at the request of the trade mark applicant / owner. A division of a trade mark registration or application is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the registration for the remainder. While a partial transfer, which involves a change of ownership, is free of charge, a request for the division of an EUTM that will remain in the hands of the same owner is subject to a fee.

Division cannot be requested :

  • before a filing date has been granted
  • during the three-month period following the publication of the EUTM application
  • if the goods and services are the object of opposition or cancellation proceedings

The same conditions apply as long as a counterclaim for revocation or declaration of invalidity is pending before an EUTM court.

The goods and services to be divided must be clearly defined, with no overlap between the goods and services that remain in the original application or registration and those in the new application(s) or registration(s) .

The owner of an earlier trade mark registered in a Member State, including a trade mark registered under international arrangements having effect in a Member State, who holds an identical EUTM for goods or services that are identical to or contained within those for which the earlier trade mark was registered, may, for the EUTM, claim the seniority of the earlier trade mark in respect of the Member State in or for which it is registered.

Seniority may be claimed at any time after registration of the EUTM.

Seniority may only be claimed from an earlier registration, not an earlier application. The date of the earlier trade mark must be before the filing date or, if available, the priority date of the EUTM.

However, the earlier right must still be valid. A seniority claim will not be accepted if the earlier right has expired. If the earlier registration has already lapsed when the claim is made, seniority cannot be claimed, even if the relevant national trade mark law provides for a six-month grace period for renewal.

It is also the applicant’s responsibility to ensure that the requirements regarding triple identity (same owner, same mark, same goods and services) are met.

The EUIPO will normally only examine whether the marks are identical and not whether the owners, goods and / or services are.

Pursuant to Decision No EX-05-5 , the owner is not required to file a copy of the registration if the required information is available to the EUIPO on the website of the national office concerned. If no copy of the registration is submitted, the EUIPO will first search for the necessary information on the relevant website and only if the information is not available there will it ask the owner for a copy.

Pursuant to Article 3 of Decision No EX-05-5 , the copy of the relevant registration must consist of a copy (simply photocopies suffice) of the registration or renewal certificate or extract from the Register, or an extract from the relevant national Gazette, or an extract or printout from an official database .

Cancellation of seniority

The EUTM owner may at any time request the cancellation of the seniority claim from the Register of its own motion.

Seniority claims may also be cancelled by a decision of a national court (see Directive 2008/95/EC ).

The cancellation of the seniority claim will be published in the EUTM Bulletin . Article 111(3) EUTMR) provides that the cancellation of the seniority will be registered together with the items referred to in Article 111(2) EUTMR .

A right in rem or ‘real right’ is a limited property right and an absolute right. A right in rem refers to a legal action directed towards property, rather than towards a particular person, allowing the owner of the right the opportunity to recover, possess or enjoy a specific object. These rights may apply to trade marks or designs. They may consist, inter alia, in use rights, usufruct or pledges. In rem is different from in personam , which is directed towards a particular person. The most common rights in rem for trade marks or designs are pledges or securities.

Other examples are DE: Pfand, Hypothek; EN: guarantees, warranties, bails and sureties; ES: prenda, hipoteca; FR: nantissement, gage, hypothèque, garantie, caution; IT: pegno, ipoteca.

There are two types of right in rem that the applicant can ask to be noted in the file or entered in the Register :

  • rights in rem that serve the purpose of guaranteeing securities (pledges, charges, etc.)
  • rights in rem that do not serve as a guarantee (e.g. usufruct)

The following information must be provided:

  • the registration number of the EUTM / RCD concerned. If the request relates to several EUTMs / RCDs, each of the numbers must be indicated
  • the right holder’s name, address and nationality / State in which it is domiciled
  • if the pledgee designates a representative, the name and business address of the right holder’s representative
  • proof of the right in rem . There is sufficient proof of the right in rem if the request for its registration is accompanied by any of the following evidence: 1) a declaration, signed by the EUTM / RCD owner, that it agrees to the registration of the right in rem ; 2) a request submitted jointly by the EUTM / RCD owner and the pledgee or by the pledgee alone and signed by both parties.

Applications for recordals of rights in rem can be made for EUTMs or RCDs even at the application stage. The same rules apply.

Cancellation of rights in rem The registration of a right in rem will be cancelled or modified at the request of an interested party, that is, the applicant or owner of the EU trade mark or the registered pledgee. In either case, the following information must be provided:

  • the registration number of the EU trade mark or RCD
  • the particulars of the right to be cancelled (to be attached via the online recordal application form)
  • documentary evidence showing that the registered right no longer exists or a statement by the rights holder to the effect that they consent to cancellation of the recordal

Applications for recordals of cancellations of rights in rem can be made for EUTMs or RCDs even at the application stage. The same rules applyy.

An application to alter a trade mark, that is to say, the representation of the mark, must be made in writing in one of the five languages of the EUIPO and is subject to a fee . The Regulations do not make any provision for the alteration of other elements of the EUTM registration.

Article 54(2) of the European Union trade mark Regulation (EUTMR) allows the representation of the mark to be altered only under extremely limited conditions, namely only when :

  • the EUTM includes the EUTM owner’s name and address, and
  • these are the elements to be altered, and
  • the alteration would not substantially affect the identity of the trade mark as originally registered

A levy of execution is the act by which a court officer appropriates a debtor’s property, following a judgment of possession obtained by a plaintiff from a court. In this way a creditor can recover its claim from all of the debtor’s goods, including from its trade mark rights.

Registration of a levy of execution may be requested by :

  • the owner of the EUTM
  • the beneficiary of the levy of execution
  • a court or authority

The formal conditions with which the request must comply depend on who submits the request.

The additional information that must be provided for applications to record levies of execution is :

  • the registration number of the EUTM or RCD
  • the beneficiary’s name, address and nationality and the State in which it is domiciled or has its seat or an establishment
  • if the beneficiary designates a representative, the representative’s name and business address; alternatively, the ID number allocated by the EUIPO

Applications for recordals of levies of execution can be made for EUTMs or RCDs even at the application stage. The same rules apply.

A trade mark licence is a contract by virtue of which the owner or applicant (hereinafter the owner) of a trade mark (the licensor), whilst retaining their ownership, authorises a third person (the licensee) to use the trade mark in the course of trade, under the terms and conditions set out in the contract.

A licence refers to a situation where the rights of the licensee in the EUTM arise from a contractual relationship with the owner. The owner’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.

Optional contents of the request :

  • Indication of whether the licence to be recorded is exclusive or non-exclusive. Where registration of an exclusive licence is sought, a statement to this effect must be made in the request for registration. Unless you have indicated otherwise, it will be deemed to be non-exclusive.
  • Where registration of a licence limited to only some of the goods or services is requested, indication of the goods or services for which the licence has been granted.
  • Where the request is to register the licence as a territorially limited licence, indication of the part of the European Union for which the licence has been granted. A part of the European Union may consist of one or several Member States or one or several administrative districts in one Member State.
  • Where the registration of a licence for a limited period of time is requested, indication of the expiry date and, optionally, of the date of commencement of the licence.
  • Where the licence is granted by a licensee whose licence is already entered in the EUTM Register, an indication that the request is for a sub-licence. Sub-licences can only be recorded after the parent licence has been recorded.

Note: Where the recordal application is made by the licensee alone, a copy of the licence agreement or other proof that the licensor agrees to the recordal of the licence must be attached to the application.

Cancellation of a license

The registration of a licence will be cancelled or modified at the request of an interested party, that is, the EUTM applicant / owner or the registered licensee.

The EUIPO will refuse the cancellation, transfer and / or modification of a licence or a sub-licence when the main licence has not been entered in the Register .

Where recordal of the cancellation of a licence / sub-licence is sought, the following information must be provided :

  • the particulars of the licence to be cancelled
  • documentary evidence showing that the registered right no longer exists or a statement by the licensee to the effect that they consent to cancellation

Applications for recordal or cancellation of licences can be made in respect of EUTMs or RCDs even at the application stage. The same rules apply.

Additional documentation is required when filing an application to record a licence; this can be uploaded via the Other attachments section of the application form .

At any time after registration an EUTM may be either wholly or partially surrendered by its owner. The surrender must be declared to the EUIPO in writing.

Total surrender can also be filed for registered Community designs.

Surrenders only become legally effective on the date of entry in the EUTM Register .

Certain additional requirements have to be met before surrender can be registered if third parties (such as licensees, pledgees, etc.) have registered rights in the EUTM concerned.

However, if the owner proves to the EUIPO that the licensee, pledgee, etc. has given its consent to the surrender, the surrender will be registered immediately upon receipt of that notice.

If the EUTM owner merely submits proof that it has informed the licensee/pledgee of its intention to surrender, the EUIPO will inform the owner that the surrender will be registered three months after the date on which the EUIPO received the evidence.

The owner’s rights in the registered EUTM, as well as those of its licensees and any other holders of rights in the mark, lapse with ex nunc effect on the date of the registration of the surrender in the Register. Therefore, the surrender has no retroactive effect.

The surrender has procedural and substantive effects.

In procedural terms, when the surrender is entered in the Register, the EUTM ceases to exist and any proceedings involving the mark before the EUIPO terminate. The substantive effects of surrender vis-à-vis third parties comprise the EUTM owner renouncing any rights arising from its mark in the future.

An EUTM may be surrendered in part, that is, for some of the goods and services for which it is registered. A partial surrender only becomes effective on the date it is entered in the Register.

For a partial surrender to be accepted, the following two conditions relating to the goods and services must be met :

  • the new wording must not constitute an extension of the list of goods and services
  • the partial surrender must constitute a valid description of the goods and services

The insolvency proceedings in which an EUTM may be involved are those opened in a Member State in the territory of which the debtor has their centre of main interests. However, where the debtor is an insurance undertaking or a credit institution, as defined in Directives 2001/17/EC24 and 2001/24/EC25 respectively, the only insolvency proceedings in which an EUTM may be involved are those opened in the Member State where that undertaking or institution has been authorised. The ‘centre of main interests’ should correspond to the place where the debtor conducts the administration of its interests on a regular basis and is, therefore, ascertainable by third parties. In the case of joint ownership of an EUTM, the above applies to the joint owner’s share.

Insolvency proceedings are understood as the collective proceedings entailing the partial or total divestment of a debtor and the appointment of a liquidator. A liquidator is understood as any person or body whose function it is to administer or liquidate assets of which the debtor has been divested or to supervise the administration of their affairs. A court is understood as the judicial body or any other competent body of a Member State empowered to open insolvency proceedings or to take decisions in the course of such proceedings. A judgment in relation to the opening of insolvency proceedings or the appointment of a liquidator is understood as including the decision of any court empowered to open such proceedings or to appoint a liquidator.

Where an EUTM is involved in insolvency proceedings, the competent national authority may request that an entry to this effect be made in the Register and published in the European Union Trade Marks Bulletin. The request should be made in writing to the EUIPO. No fee is required .

For EU collective marks and EU certification marks, regulations governing use must be submitted. This action enables you to amend the regulations as necessary.

The amendment will not be entered in the Register if the amended regulations do not satisfy the requirements of Article 75(2) of the European Union trade mark Regulation (EUTMR) , for collective marks, and Article 84 EUTMR for certification marks, or if one of the grounds for refusal referred to in Article 76 or Article 85 EUTMR respectively is involved.

Where an amendment to the regulations is accepted, it will be registered and published .

Design applications may cite the (team of) designer(s). The right to be cited as designer is not limited in time. This action enables you to amend the citation.

The recordal can only be requested by the holder or representative of the design. The design must be published (status A1) or under deferment (status A2).

There are other, less frequently used, recordal types, such as sub-licences or modification of insolvency.

Additional documentation will normally be required to support your application when filing other types of recordals; files can be uploaded via the Other attachments section of the application form when prompted .

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trademark assignment recordal

Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

  • Trade Marks
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  • Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

ukipo office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

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  • Jun 9, 2021

Can I Transfer My Trademark? How?

This is one of the commonly asked questions by trademark owners about trademark. The answer is yes, a trademark is an intangible asset which can be transferred from one to another. The process is generally known as, assignment of trademark.

Section 64(1) of the Malaysian Trademarks Act 2019 ("Trademarks Act") provides that, a registered trademark shall be transmissible by assignment or assignment in the same way as other personal or movable property, and shall be so transmissible either in connection with the goodwill of a business or independently"

"Wait, does it mean only registered trademark can be assigned? What happened to unregistered trademark?"

Fret not, unregistered trademark can be assigned too! Section 64(6) of the Trademarks Act provides that, nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business. (Phew!)

trademark assignment recordal

How to assign a trademark ownership?

To kickstart the process, the original owner of the trademark ("Assignor") and the new owner of the trademark ("Assignee") should sign a deed of assignment, a legal instrument that transfer the trademark from the Assignor to the Assignee. One deed of assignment may include multiple trademarks. The deed of assignment contains the terms and condition to transfer the trademark. Generally, it should include the identity of parties, the details of trademark to be transferred, effective date of transfer, and the consideration, ie. the transfer price. The consideration may be a nominal sum.

Once the parties have signed the Deed of Assignment, the document should be filed with the Government Trademark Office, with the prescribed official form (Form TMH-1) and fees.

Upon filing the documents, the Malaysian Trademark Office will usually take a few months to record the assignment into the database of the registry.

Although it seems like may take some time, but the effective date of transfer of ownership is based on the date of deed of assignment, not the date of recordal by the Trademark Office. So the rights of the parties are not affected, despite the heavy workload in the Trademark Office.

Who should be responsible to file the assignment?

There are no hard and fast rules as to whether the deed of assignment and/or application for recordal of assignment should be done by the assignor or assignee. The parties may decide on a case-to-case basis.

International Assignment of Trademarks

Since registration and protection of trademark is territorial based, the recordal of trademark assignment will also be done country by country.

In some countries, a universal deed of assignment is acceptable. Hence the same document may be used to apply for recordal of trademark assignment in a few countries and save some legal fees in drafting a separate deed of assignment in each country.

However, in some countries, there are specific requirements on format or languages of the Deed of Assignment.

So, it is always safe not to assume and you should seek consultation from your trademark agent .

When is the best timing to assign trademark ownership?

There are many reasons that prompt the need of assignment of trademark. For example, sale of trademark, corporate restructure, moving a business from sole proprietorship to private limited company (Sdn. Bhd.) or vice versa & etc.

Once you have decided any of the above moves, the assignment of trademark should be done immediately without any delay.

There are many instances that the assignment of trademark has been delayed due to procrastination or overlook. This may lead to serious and unwanted consequences.

For instance, after a few years, upon realizing the need of doing the deed of assignment, if the assignor has ceased to operate or passed away (for individual assignor), this may complicate the process of recordal of assignment due to the difficulty in locating the assignor to sign the documents.

Another example is, there may be a problem when the assignee needs to take legal action against trademark infringer, as the legal ownership of the assignee on the trademark is questionable.

Looking for assigning the ownership of your trademark? Don't wait! Contact us today!

Written by,

Li Yen Seow

IP Legal Executive

Bachelor of Laws

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.

Copyright reserved 2021 © IP Gennesis Sdn Bhd

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FAQs - Recording Trademark Assignments in Turkey

Is there any requirement for disclosing or declaring a consideration in assignment agreements.

No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording an assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there are more than one trademark owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights.

In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the trademark registry.

Is the recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry

Is the original of Assignment Agreement required?

Not actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

Is it possible to record Assignment Agreement comprising multiple trademark cases by one request for assignment at TURKPATENT ?

Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office.

Is Power of Attorney required for recording an assignment in the trademark registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.

Are official fees payable in order to record a Trademark Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one trademark within Assignment, official fees should be paid for each case separately.

Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish trademark application or registration numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.

Can a pending trademark application be assigned?

Yes, a pending trademark application can be assigned; there is no requirement for grant or registration of application for assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of trademark should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, i.e. Courts, chambers of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.

If a trademark registration or trademark application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a trademark.

If a trademark or trademark application pledged, is it still possible to assign the rights thereon?

Pledge is not an obstacle to assign the rights of a trademark.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

Can a registered or applied-for trademark be assigned partially?

Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.

In the case of a partial assignment, is there any specific requirement for Assignment Agreement?

Yes, it is obligatory to indicate class numbers and goods and services subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.

In the case of a partial assignment, how does TURKPATENT handle recordal of the assigned part of trademark registration or application?

TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.

In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?

No, it is not obligatory to assign same or confusingly similar goods and services.

If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?

Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol if they are not filed by means of International Bureau of WIPO .

Do you have further questions about assignments for trademarks in Turkey? Please contact us . We will answer your questions as soon as possible.

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United States Patent and Trademark Office - An Agency of the Department of Commerce

Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

  • Transfer ownership to another entity or party through an "assignment;" or
  • Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

Additional information about this page

COMMENTS

  1. Trademark assignments: Transferring ownership or changing your name

    If you don't receive one, contact the Assignment Recordation Branch. The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: A critical piece of information was omitted from the cover sheet. The document is illegible or not scannable.

  2. Transferring ownership/ Assignments FAQs

    How do I pay to have an assignment recorded? What are the requirements for recordation (37 CFR 3)? What USPTO office records assignment and other documents affecting title? share Frequently asked questions about transferring ownership and changing assignments for your intellectual property.

  3. Assignment Center

    Copy assignment: The new copy function allows you to copy an existing assignment and edit the details so it is accurate for the new assignment. This feature saves you from reentering previously entered information. January 16, 2024. Customer service phone line. Toll free: 1-800-972-6382 | Local number: 571-272-3350.

  4. Assignment Recordation Branch (ARB)

    Learning and Resources Assignment Recordation Branch (ARB) Local 571-272-3350 For help with following a new assignment or obtaining information on a pending assignment, questions on assignments, liens on patents, filing assignments, recordation forms, and trademark assignments.

  5. USPTO Trademark Assignment: Everything You Need To Know

    USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand.

  6. Trademark Assignment Recordation

    A trademark assignment agreement is a legal document that transfers a design, symbol, phrase, and/or word from the assignor (current owner) to the assignee (future owner). On the other hand, a license grants permission to use a mark without transferring the mark's ownership rights.

  7. Worldwide Trademark Assignments

    Certain countries require that the assignor's name and address on documents filed with the Trademarks Office match exactly with the name and address on record, which could necessitate multiple recordals to correct or bring that information up to date.

  8. Managing major projects in a trademark portfolio: creation, assignments

    It can also be difficult to enforce trademark rights that are not registered in the owner's name, while further assignments and name changes can become difficult if previous changes have not been recorded. Providing the previously required evidence of the assignment is often more costly than recordal of the assignment would have been at the time.

  9. IP Recordals & Rights Transfer Services

    Darts-ip Trademark Case Law Data. ... From assignments or mergers and acquisitions, to changes of name/address, our experienced global team provides a cost-effective alternative to managing the Recordals process in-house. ... Benefit from a 360-degree view of your recordal project, with our project status dashboard. ...

  10. PDF Trade Marks in IP/IT Transactions Assignment, Licensing and Security

    The Rights Trade Marks and Trade Names A trade mark is any mark that is used by a person for the purpose of distinguishing goods or services manufactured, sold, leased, hired or performed by him from those of others. An individual or a partnership company, joint venture, trade union, or specific administrative entity may own a trade mark.

  11. 15 CFR § 280.323

    (a) A trademark application or registration which forms the basis of a fastener recordal may be transferred or assigned. Any transfer or assignment of such an application or registration must be recorded in the United States Patent and Trademark Office within three months of the transfer or assignment. A copy of such transfer or assignment must also be sent to: Director, United States Patent ...

  12. 302-Recording of Assignment Documents

    (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office.

  13. Trademark Assignment

    Recording a Trademark Assignment If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).

  14. Trademark Assignment Recordal USPTO

    The assignment of a Trademark document is called Trademark Assignment Agreement which has to be filed with USPTO for assignment recordal. For an assignment recordal following are the requirements: The submitter must qualify the submission i.e, he should be the owner of the Trademark. True copies of assignment-related documents; original ...

  15. Managing International Trademark Registrations

    Renew your registration. Cancel a registration. Use "Change ownership" under eMadrid to request a total (all goods and services in all designated Members) or partial (some goods and services, in some designated Members) change in ownership. You can also appoint a new representative and add an address for correspondence at the same time.

  16. European Union Intellectual Property Office

    We would like to show you a description here but the site won't allow us.

  17. Recordal of assignments of UK Trade Marks

    A scanned electronic copy of the assignment document will suffice. Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21.

  18. Trademark FAQs

    If the Recordal is based on a U.S. Trademark Application or Registration, the application Serial Number or Registration Number must be included in the appropriate space. ... The Electronic Trademark Assignment System (ETAS) enables the user to create and submit a Trademark Assignment Recordation Coversheet by completing on-line web forms ...

  19. Transfer of IP rights in United Kingdom

    It is advisable to record a trademark assignment, as otherwise the trademark cannot be enforced against a person who was not aware of the transaction. If a trademark is infringed after the assignment but before this is recorded, the new proprietor must make the recordal within six months to recover the costs of litigation against the infringer.

  20. Trademark Assignment (Recordal Change) in Bangladesh

    Requirements for the assignment. (1) Simple POA, No notarization or Legalization is required. (2) Assignment Deed should be Notarization as well as certified by the Embassy of Bangladesh of the assignor/assignee country. Then send us the original copy of the same. The Assignment Deed needs to be Legalized from the foreign ministry of Bangladesh.

  21. Can I Transfer My Trademark? How?

    Yes, a trademark is an intangible asset which can be transferred from one to another. The process is generally known as, assignment of trademark. Section 64 (1) of the Malaysian Trademarks Act 2019 ("Trademarks Act") provides that, a registered trademark shall be transmissible by assignment or assignment in the same way as other personal or ...

  22. FAQs

    Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office. Is Power of Attorney required for recording an assignment in the trademark registry?

  23. Patents Assignments: Change & search ownership

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382. Patents Assignments: Change & search ownership