T.M.E.P. § 503.03
Requirements for Recording
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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503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
Applications and Registrations Based on §§1 and 44 of the Trademark Act
To expedite recordation, new owners are encouraged to file requests for recordation electronically through the Electronic Trademark Assignment System ("ETAS") on the USPTO website at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a party can create and submit a Trademark Assignment Recordation Coversheet by completing an online form, and attach the supporting legal documentation as an image in tagged image file format ("TIFF") for submission via the Internet.
See TMEP §§503.03(b) et seq. regarding the requirements for recordation.
Section 66(a) Applications and Registered Extensions of Protection
In an application under §66 of the Trademark Act or a registered extension of protection of an international registration to the United States, the new owner must record the change of ownership with the IB, who will record the change in the International Register and notify the USPTO accordingly. See TMEP §501.07. The IB does not require supporting documents. See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
503.03(b) Supporting Documents
To record a document affecting title to a trademark application or registration with the Assignment Services Division, a legible cover sheet and one of the following must be submitted:
(1) A copy of the document;
(2) A copy of an extract from the document evidencing the effect on title; or
(3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.
To record a name change, only a legible cover sheet is required. 37 C.F.R. 3.25(b).
Documents filed through ETAS must be in TIFF format. When printed to a paper size of either 21.6 by 27.9 cm (81/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides. 37 C.F.R. 3.25(c)(1).
All paper documents submitted for recordation must be submitted on white and non-shiny paper that is either 81/2 by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. Original documents should not be submitted, because the Office does not return recorded documents. 37 C.F.R. 3.25(c)(2).
503.03(c) English Language Requirement
The USPTO will not record a document that is not in the English language unless it is accompanied by an English translation that is signed by the translator. 37 C.F.R. 3.26.
503.03(d) Fee for Recording
All requests to record documents in the Assignment Services Division must be accompanied by the appropriate fee. A fee is required for each application and registration against which a document is recorded, as identified in the cover sheet. 37 C.F.R. §§2.6 and 3.41. The fee does not depend on the length of the document.
If the Assignment Services Division determines that materials submitted for recording do not meet the recording requirements, the fee is not refunded.
503.03(e) Cover Sheet
Each document submitted for recording in the Assignment Services Division must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. 3.31. Only one set of documents and cover sheets to be recorded should be filed. 37 C.F.R. 3.28.
To expedite recordation, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a new owner can create a Trademark Assignment Recordation Coversheet by completing an online form, and attach the supporting legal documentation as a TIFF image for submission via the Internet.
If the new owner decides to file the assignment or name change on paper, the cover sheet must be legible. 37 C.F.R. 3.25(a). The USPTO has a trademark cover sheet form that can be downloaded from the USPTO website at http://www.uspto.gov/web/forms/pto1594.pdf. Questions regarding cover sheets should be directed to the Assignment and Certification Services Division. Contact information is provided on the USPTO website at http://etas.uspto.gov/. See notice at 1140 TMOG 65, 69 (July 28, 1992). Use of the USPTO's form is preferred, but not mandatory.
Under 37 C.F.R. 3.31, a trademark cover sheet must contain the following:
- The name of the party conveying the interest;
- The name and address of the party receiving the interest;
- A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
- Each application serial number or registration number against which the document is to be recorded, if known. If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
- The name and address of the party to whom correspondence concerning the request to record the document should be sent;
- The date the document was executed; and
- The signature of the party submitting the document. For a document filed electronically, the person who signs the cover sheet must either: (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g. "/Thomas O'Malley/") in the signature block on the electronic submission; or (2) sign the cover sheet using some other form of electronic signature specified by the Director.
The cover sheet should also include:
- The entity of the conveying party, and the relevant entity information for the receiving party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a partnership);
- The number of applications and/or registrations identified in the cover sheet;
- The total fee; and
- An identification or description of the mark.
In addition, if the receiving party has designated a domestic representative (see TMEP §§501.04 and 604) , the cover sheet should include an indication to this effect.
Documents that are not accompanied by a completed cover sheet will not be recorded. 37 C.F.R. 3.51.Separate patent and trademark cover sheets should be submitted for documents that include interests in, or transactions involving, both patents and trademarks. If a cover sheet contains both patent and trademark information, any information contained therein about pending patent applications will become public record upon recordation. 37 C.F.R. §§3.28 and 3.31(b).