Should you record a trademark assignment with the USPTO?

Our page on IP licensing and assignments notes that an unrecorded transfer of a registered trademark leaves the register showing someone else as owner when a buyer, investor or platform checks. This page covers the federal rules for trademark assignments, which sit in section 10 of the Lanham Act, 15 U.S.C. 1060, and the USPTO's recording rules in 37 CFR Part 3. They apply to brands bought, sold, merged or moved between companies, including the everyday case of a founder moving a mark into a new LLC.

How recording works, step by step

1. Sign a written assignment that includes goodwill. A registered mark, or one in a pending application, is assignable "with the good will of the business in which the mark is used," and assignments "shall be by instruments in writing duly executed" (1060(a)(1), (a)(3)).
2. Check the filing basis. An intent-to-use application cannot be assigned before an allegation of use is filed, except to a successor to the applicant's ongoing business (1060(a)(1)). Applications and registrations based on Madrid Protocol section 66(a) are assigned through the World Intellectual Property Organization, not the USPTO.
3. Prepare the cover sheet in Assignment Center. It lists the conveying party, the receiving party's name, address, entity type and citizenship, a description of the transaction, each registration and application number, the execution date and the submitter's signature (37 CFR 3.31).
4. Attach the document. A copy of the assignment, an extract showing the effect on title, or a statement signed by both parties explaining how the conveyance affects title (37 CFR 3.25).
5. Pay the fee. $40 for the first mark and $25 for each additional mark in the same document, electronic or paper (fee codes 8521 and 8522; 37 CFR 2.6(b)(6)).
6. Watch for the notice of recordation. The USPTO says to look for it in about seven days, then check TSDR to confirm the owner information updated, and to file a TEAS form if it did not.

What does recording protect you from?

The main risk is a seller who assigns the same mark twice. Under section 1060(a)(4), "An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded" within three months after the assignment or before the later purchase. Record within three months, or at least before anyone else buys, and you are protected. Do neither, and if a later buyer pays for the mark without notice of your deal, your assignment is void against that buyer, leaving you with a claim against the seller rather than the mark.

Recording also gives you evidence. A recorded assignment's information is prima facie evidence of execution (1060(a)(3)). And it puts the right owner where examiners, opponents and courts look. The USPTO presumes the original applicant owns an application or registration unless there is an assignment, and a new owner must establish its ownership before it can take action, either with documents showing the chain of title or by pointing to where the assignment is recorded (37 CFR 3.73). That matters when a maintenance filing is due: our page on trademark renewal deadlines and fees explains why a declaration filed by the wrong party can fail.

What recording does not do

Recording is a ministerial act. The USPTO says it is "not a determination of the document's validity or of its effect on title" (TMEP 503.01(c)). The Assignment Recordation Branch does check that the document matches the cover sheet, including whether the mark was transferred with goodwill, and the USPTO lists missing goodwill as one of four common reasons for a notice of non-recordation. Recording also does not change the correspondence address or serve as a response to an office action (TMEP 503.01(b), (d)), and the USPTO treats a prior attorney's recognition as ending when ownership changes.

Name change, merger or assignment: which one is it?

The USPTO uses the same Assignment Center for all three, but they are different transactions. A change of the owner's name, such as a company renaming itself or an individual changing a surname after marriage, is a name change: the owner stays the same legal person, and only a cover sheet is required (37 CFR 3.25(b)). A merger, or a certificate showing a change of a business's name, is a document that affects title and is "a proper link in the chain of title," which the USPTO records too (TMEP 503.02). A sale of the brand to a different company, or a founder moving a mark into a new LLC, is an assignment and needs the written instrument and goodwill language described above.

Getting the category right matters because the USPTO compares the cover sheet with the document, and a mismatch is one of its common reasons for non-recordation. If what you really need is to let another company use the mark while you keep ownership, an assignment is the wrong tool: a license is, and our page on licensing a trademark that is still pending explains how that works even before registration. Our main copyright and trademark page covers how ownership fits into a maintenance calendar.

What changes the answer

• Intent-to-use applications. Before a statement of use or amendment to allege use, an intent-to-use application can go only to a successor to the applicant's ongoing business, and the TMEP says a forbidden assignment "renders the application void." Our page on selling a trademark application before the mark is in use covers this trap.
• Partial assignments. A co-owner can assign its share, and an owner can assign the mark for some goods along with that part of the business. Both owners then file their own maintenance documents, and the USPTO suggests a request to divide (TMEP 501.06). An assignment cannot impose geographic limits on a registration; that takes a concurrent use proceeding.
• Foreign assignees. A new owner domiciled outside the United States must appoint qualified U.S. counsel to act before the USPTO, as our page on whether a foreign company needs a U.S. trademark attorney explains, and may designate a domestic representative for service (1060(b)).
• Madrid registrations. Ownership changes for a U.S. extension of an international registration are recorded with WIPO, and a transfer can go only to someone eligible under the Protocol (TMEP 501.01(b)). Our page on protecting a U.S. trademark in other countries explains that system.
• Licenses and security interests. These are not assignments, but the USPTO records them to give third parties notice of equitable interests (TMEP 503.02). A license also carries its own duty of quality control, covered on our page on why a trademark license needs quality control.

A worked example

Common mistakes

• Leaving out goodwill. An assignment "in gross" with no goodwill language is a common reason for non-recordation and can undermine the transfer.
• Assigning an intent-to-use application to a buyer of the name only. That can void the application.
• Waiting past three months. The statute's protection runs from the assignment date.
• Mismatched details. Cover sheet and document must agree; mismatches are another of the USPTO's common reasons for non-recordation.
• Assuming the record updated itself. Sometimes TSDR does not update automatically, and the owner must file a TEAS form (TMEP 504.01).
• Recording copyrights here. Logos and artwork also carry copyright, which is recorded with the Copyright Office under different rules; see our page on recording a copyright assignment.

What to do this week

1. Look up each of your marks in TSDR and compare the owner of record with the company that actually uses the mark.
2. For any mismatch, sign a written assignment that transfers the mark with its goodwill.
3. Check whether any application is still intent-to-use without an allegation of use, before assigning it.
4. Record each assignment in Assignment Center and save the notice of recordation.
5. Update correspondence and attorney information with a separate TEAS form.
6. Diary upcoming Section 8 and 9 deadlines in the new owner's name.

Frequently asked questions

Is an unrecorded trademark assignment valid?

Between the parties, a written, executed assignment with goodwill can be valid without recording. Recording protects against later buyers without notice and gives prima facie evidence of execution (1060(a)(3), (4)).

How long does recording take?

The USPTO says Assignment Center records changes in less than a week, with a notice of recordation in about seven days. Paper filings are recorded within 20 days of filing.

Does the USPTO check whether my assignment is legally valid?

No. Recording is ministerial (37 CFR 3.54; TMEP 503.01(c)). The USPTO decides the effect of a document only when the new owner tries to act, for example by filing a statement of use or a Section 8 declaration.

Can I fix a mistake on the cover sheet?

The USPTO says to call the Assignment Recordation Branch immediately; a recordation may be suspended for two days. Once recorded, corrections follow TMEP 503.06.

Do I need the registration certificate reissued?

No, but the new owner may request a new certificate in its name for $100 electronically (37 CFR 2.6(a)(8)), and a pending application can issue in the assignee's name if the assignment is recorded and a request is filed in time (37 CFR 3.85).

Should I record a trademark license?

The USPTO will record licenses and security agreements to give third parties notice (TMEP 503.02). Whether to record one depends on the deal; it is not an assignment and does not change the owner of record.

Zala IP Law prepares and records trademark assignments for brands that are buying, selling or reorganizing, and Shreepal J. Zala practices federal intellectual property law nationally. If your registration is in the wrong name, request a consultation or call 404-313-1701.