T.M.E.P. § 501.06
Partial Assignments

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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501.06 Partial Assignments

A trademark may be owned by two or more persons (see TMEP §803.03(d)) , and a co-owner may assign his or her interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.

A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business. See VISA, U.S.A., Inc. v. Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982). A single trademark of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods or services on which that mark appears. After a registration has been assigned with respect to only some of the goods or services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. 1058 or §1141k to maintain the registration. If only one party files, only those goods or services in the registration for which that party owns the mark are continued or renewed. See TMEP §§1604 et seq. and 1613 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 and 1614 regarding renewal.

A trademark owner may not use an assignment to impose geographic restrictions on a registration. This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board or pursuant to a final determination by a federal court. 15 U.S.C. 1052(d). See TMEP §§1207.04 et seq. and Trademark Trial and Appeal Board Manual of Procedure ("TBMP") Chapter 1100 regarding concurrent use registration. However, the Assignment Services Division of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration. As noted in TMEP §503.01 , the Assignment Services Division does not examine the substance of documents submitted for recording. The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.

See TMEP §§1615 et seq. regarding a registrant's request to divide a registration in which ownership has changed with respect to some but not all of the goods/services, and TMEP §1110.08 regarding an applicant's request to divide a pending application in which ownership has changed with respect to some but not all of the goods/services.