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Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

• I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
• I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. 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. 
• The information on the cover sheet and the supporting document do not match. 
• The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

• Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
• Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

• Go to TSDR .
• Enter the application serial number or registration number.
• Select the “Status” button.
• Scroll down to the “Current Owner(s) Information” section. 
• Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

• If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
• If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
• If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

Additional information about this page

Recording Assignments/Transfers And Changes Of Name In Canada Are Now Less Onerous

Contributor

On October 30, 2019, a number of significant amendments to the Canadian Patent Act and Patent Rules came into force, which include amendments affecting the procedures for registering assignments and changes of name. Under the new regime, the term "transfer" replaces "assignment" and the term "record" replaces "register".

Recording a change of name or a transfer with the Canadian Intellectual Property Office (CIPO) for a patent or application is not mandatory , but there are still good reasons to do so. It is also important to ensure that patents issue to the correct entity and CIPO's records provide accurate ownership information to the public.

Recording transfers with CIPO is especially important because section 49(4) of the Patent Act provides that a patent transfer not recorded with CIPO is void if a subsequent transferee records a transfer with CIPO. The previous version of this section specifically included applications, whereas the current version explicitly includes patents but does not reference applications. This wording change would seem to suggest that this rule no longer applies to patent applications.

Recording Transfers

Under the previous version of the Patent Act , to register an assignment the applicant or patentee was required to request registration of an assignment, provide a copy of the assignment document, and provide an affidavit or other proof that the assignment was signed and executed.

Under section 49 of the new Patent Act and section 126 of the new Patent Rules an applicant or patentee no longer has to provide evidence of a transfer or a copy of an assignment to record a transfer. However, where the transferee alone requests the recording of a transfer, evidence of the transfer is still required. A copy of the document effecting the transfer along with one of the following documents is considered satisfactory evidence of the transfer:

• A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• The signature of a witness or the presence of a corporate seal on the document effecting the transfer;
• A document showing that the transfer was registered in a patent office of another country.     

Additionally, section 49(5) of the amended Patent Act allows the Commissioner of Patents to remove a recorded transfer where it receives satisfactory evidence the transfer should not have been recorded. The Patent Act does not specify what is considered satisfactory evidence; however, section 49(6) of the Patent Act specifies that the Commissioner may not remove the recording of a transfer only because the transferor previously transferred the patent to another person. The use of the term "patent" with no reference to applications in this section again seems to indicate that this limitation does not apply to patent applications.  

Recording Changes of Name  

Under the previous version of the Patent Rules , to register a change of name on a patent or application, an applicant or patentee had to request the registration of a change of name and submit evidence showing the change of name occurred, specifically a statutory declaration, affidavit, or copy of the change of name document. Under section 125 of the amended Patent Rules an applicant or patentee can now request a change of name without submitting evidence of the name change.

Amendments to the Patent Act and Patent Rules have made the procedure for recording a transfer or change of name less onerous for applicants and patentees.

Content shared on Bereskin & Parr's website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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• Intellectual Property

Registering Documents With CIPO

A frequent interaction with the Canadian Intellectual Property Office is the registering of documents ‎against pending or granted patents and trademarks. Assignments of intellectual property rights, changes of corporate ‎name, reorganizations and security interests are all commonly registered. As part of changes expected ‎later this year, this practice is likely to change, reducing some formalities.

For the approximately 23,000 patents granted in 2018, around 20,000 of these types of documents ‎were registered. With a government fee of $100 per document, around $2 million in government fees ‎were paid to register various documents against the granted patents. ‎

‎Currently, for patents, sections 49 and 50 of the Patent Act provide certain guidance as to the ‎assignments of patents and the registration of assignments against patents and patent application. In ‎particular, section 50(2) says that “Every assignment of a patent … shall be registered in the Patent ‎Office in the manner determined by the Commissioner.”

The Patent Act also sets out guidance as to the proving the assignment stating at s.50(3) “No assignment, ‎grant or conveyance shall be registered in the Patent Office unless it is accompanied by the affidavit of ‎a subscribing witness or established by other proof to the satisfaction of the Commissioner that the ‎assignment, grant or conveyance has been signed and executed by the assignor and by every other ‎party thereto.” The Manual of Patent Office Practice (MOPOP) says that the patent office will accept a ‎variety of proofs, including:

• A statement from the requestor that to their knowledge the document effecting the transfer has ‎been signed and executed by all parties (for patents), or by the assignor (for patent applications); ‎
• A similar statement by a witness; ‎
• The signature of a witness or a corporate seal on the assignment document; ‎
• A document showing that the assignment was registered in a patent office of another country. ‎

The applicable sections of the Patent Act will be amended, likely in the fall of 2019, as part of ‎significant changes to the Patent Act (see Bill C-43 ) to read in part as follows: ‎

49 (2) The Commissioner shall, subject to the regulations, record the transfer of an application for a patent on the request of the applicant or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the application. (3) The Commissioner shall, subject to the regulations, record the transfer of a patent on the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the patent.

Similar changes are being made to the Industrial Designs Act (also part of Bill C-43) and the Trademarks Act (see Bill C-31 ) which will standardize the practice to some degree.

The Patent Office practices for the new Act and Rules are still being finalized but a consultation on the procedures was ‎announced earlier this year and is open until May 27 th . These procedures are based on the draft ‎ Patent Rules published in the Canada Gazette at the end of 2018. In addition to referring to all updates ‎to chain of title of patents and patent applications as ‘transfers’, the procedures will allow an applicant ‎or the patentee to record a transfer without additional evidence (i.e. without any underlying ‎documentation). Only if the request is made by a transferee will documentation be required, to a ‎similar standard as is required under the present rules. This will reduce the need for providing specific supporting documentation in some circumstances.

Other documents such as security agreements may continue to be registered against patent and ‎patent applications as permitted under new proposed Patent Rule 125 and under similar sections for trademarks and industrial designs.

The Patent Act and Rules currently ‎and under the proposed amendments do not have an explicit priority system for registered liens and ‎security interests. New s49(4) of the Patent Act, that voids transfers if a subsequent transfer if the transfer to the ‎subsequent transferee has been recorded, only appears to apply to transfers, not the registration of ‎other documents. ‎There have been few reported cases on the effect of registering documents and particularly assignments with respect to priority but see Verdellen v. Monaghan Mushrooms Ltd , 2011 ONSC 5820 , where the lack of a registered assignment was a key fact in determining ownership of patents.

We expect that the practice of registering transfers as well as security interests in egistered intellectual property ‎will continue under the new rules coming into force later this year and that applicants will take ‎advantage of the reduced formalities to reduce the transaction costs in Canada.‎

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Electronic signature considerations for patent practice

In the wake of the COVID-19 pandemic, many people are working from home, making it more difficult than usual to get handwritten signatures. Here are answers to some frequently asked questions regarding the use of electronic signatures on assignment documents for patents and patent applications.

When do I need to submit assignment documents to the Canadian Intellectual Property Office?

It is no longer the case that you always need to submit assignment documents to the Canadian Intellectual Property Office (CIPO) in order to record a transfer of a patent or patent application. According to procedures that came into effect in October 2019, the applicant may record a transfer without submitting the assignment document. Evidence of the transfer is only required when the transfer is recorded by the transferee, in which case a copy of the assignment document along with one of the following pieces of evidence would be considered satisfactory (s. 6.05.01b, MOPOP):

• A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• The signature of a witness or the presence of a corporate seal on the document effecting the transfer; or
• A document showing that the transfer was registered in a patent office of another country.

There is no general requirement to submit assignments to CIPO in conjunction with a patent application in Canada, but the option to do so remains available as a distinct process from recording a transfer

Does CIPO accept electronic signatures on assignment documents?

Generally, CIPO does not accept electronic signatures. However, due to the COVID-19 pandemic, CIPO has reduced its signature requirements and is temporarily accepting electronic signatures. This temporary measure was recently published on  CIPO's website  (see Question #39). Although it appears that this measure applies to all documents, including assignment documents, CIPO does not explicitly specify whether assignment documents may be electronically signed. CIPO has also not specified how long it will continue to accept electronic signatures.

Which types of electronic signatures does CIPO accept?

Due to the COVID-19 pandemic, CIPO is temporarily accepting the following types of electronic signatures:

• Facsimile signatures (images of a signature submitted by facsimile)
• Text string signatures (also known as s signatures (Ex: /JohnDoe/))
• Font type signatures
• Digital signatures that are an electronic capture of a handwritten signature (such as DocuSign)

Are electronically-signed assignment documents legally valid?

In addition to the question of whether CIPO will accept electronic signatures, there is the further question of whether an electronically signed assignment legally effects the transfer of patent rights. This will depend on the jurisdiction of the assignment. If the assignment is governed by foreign law, then the legal validity of the electronically signed assignment document will depend on the law in that foreign jurisdiction.In this case, neither the  Patent Act  nor the  Patent Rules  (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

In Canada, there are separate federal and provincial regimes for electronic signatures. The federal regime applies to the  Patent Act  (R.S.C., 1985, c. P-4), since it is a federal statute. Part II of the  Personal Information Protection and Electronic Documents Act  (S.C. 2000, c. 5) (PIPEDA) deals with electronic signatures under the federal regime. If a federal statute requires a signature on a document, then that signature must be handwritten, unless the federal statute in question appears in Schedules 2 or 3 of PIPEDA. Very few federal statutes appear in these Schedules. As a result, the federal regime under PIPEDA has limited applicability. In particular, the  Patent Act  is not listed in the Schedules. When a federal statute requires a signature on a document and does not appear in Schedules 2 or 3 of PIPEDA, you can also find permission to use an electronic signature in the federal statute itself, in related regulations, or in case law.

In this case, neither the  Patent Act  nor the  Patent Rules  (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

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IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

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You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

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