TMEP 503.06(c): Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration

This is the October 2015 Edition of the TMEP

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503.06(c)    Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration

When the owner of an application or registration discovers that another party has improperly recorded an assignment, name change, or other interest against the owner’s application or registration, the owner should initially contact the party who filed the improper recording and have that party record corrective documents. See TMEP §503.06(a) regarding typographical errors in the cover sheet. If that party files corrective documents, the Assignment Recordation Branch will record the assignment, change of name, or other interest in the correct application or registration, and remove any references to the application or registration in which the improper recording was made. The assignment, change of name, or other interest will remain at the reel and frame number where it was originally recorded, but a search of the assignment records will not associate the improper recording with the owner’s property.

If the party who recorded the improper document cannot be located or is unwilling to file corrective documents, the owner must file documents to correct the record. Depending on the nature of the error that resulted in the improper recordation, the owner has two options.

If the existing evidence of record clearly demonstrates that the improper assignment, change of name, or other interest recorded against the owner’s application or registration (“owner’s property”) was the result of a typographical error in identifying the application or registration number (e.g., the party who improperly filed mistakenly transposed property numbers), and the improper recording was filed by someone who is not the owner and does not have proper chain of title, the owner may submit a request to the Office of the Deputy Commissioner for Trademark Examination Policy to have any reference of the improper recording removed from the owner’s property. The owner must submit the request in writing, detailing the erroneous information and providing the reel and frame number where the document is recorded, and ask that the recording not be associated with the owner’s property. The request should be faxed to 571-273-8950. The request will only be granted if the current assignment records show on their face that a typographical error caused the recordation against the wrong property and the error was made by someone other than the owner. The request will not be granted if there is a dispute regarding ownership.

If the record as a whole shows that the application or registration number is consistent with the identified mark and nothing on the face of the recorded document indicates there was an error in identifying the application or registration number, the owner may record corrective documents with the Assignment Recordation Branch. A corrective assignment, name change, or other interest must include: (1) a new complete cover sheet containing the correct owner information; (2) an affidavit or declaration identifying the correct owner, stating why the previously recorded document was not proper, and providing the reel and frame number where the original cover sheet and underlying document is recorded; and (3) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41). See TMEP §503.03(e) for information about the cover sheet.

The affidavit or declaration must: (1) be signed by someone with firsthand knowledge of the facts; (2) identify the current owner of the application or registration; and (3) state why the document recorded against the application or registration was erroneous, and that the last correct owner or assignee has been and continues to be the owner of the application or registration.

If corrective documents are filed electronically via ETAS, the owner should check the box titled “Corrective Assignment” in the “Nature of the Conveyance” field and fill in the following required information in the fields provided: (1) identification of the parts of the assignment or change of name that need to be corrected (e.g., name of the receiving party, or trademark application serial number or registration number); (2) the reel and frame number where the original cover sheet is recorded; and (3) identification of the nature of the conveyance that was originally recorded (e.g., assignment of entire interest, change of name). The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.

If the corrected documents are filed on paper using the form provided by the Assignment Recordation Branch, the owner should check the box titled “Other” in the section titled “Nature of Conveyance” and, in the space provided, state the following: “Corrective assignment to correct the previously recorded assignment against Property Number ^ (insert trademark application serial number or registration number) recorded at ^ (identify the reel and frame number where the original cover sheet is recorded).” The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.

Whether filed via ETAS or on paper, if all the filing requirements are met in instances where nothing on the face of the recorded document indicates that there was an error in identifying the application or registration number, the Assignment Recordation Branch will record the corrected assignment or change of name in the identified application or registration, but will not remove the improper recording. However, anyone searching and reviewing the assignment records will see the corrective documents, which clarify the chain of title.

In the rare case of a dispute in ownership where one party attempts to appropriate ownership of the application or registration by filing an assignment document (or other document affecting title), the other party’s recourse is to record an affidavit or declaration (as explained above) with the Assignment Recordation Branch in support of its position. As noted above, the USPTO’s recordation of documents purporting to affect chain of title is a purely ministerial act and is not an Office determination of the document's validity or of its effect on title to an application or registration. See 37 C.F.R. §3.54; TMEP §503.01(c).