trademark assignment meaning

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
If your trademark is state-registered, you must also record the transfer with the applicable state.
The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

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Trademark assignment—How-to guide

Find out more about business management

by LegalZoom staff

1. Overview

2. Do's & don’ts checklist

3. Trademark assignment instructions

A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including trademarks or software) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly drafted trademark assignment can help in both circumstances.

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.

If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your trademarks.

2. Do's & don’ts checklist

A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like “Coca-Cola” and images like Nike’s famous “swoosh.” A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.
An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). A transfer of partial rights is not a trademark assignment: do not revise the agreement to limit the reach of the rights being provided.
A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made.
The advantage of selling your trademark outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property: you will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a trademark, make sure that this is the best (and most lucrative) approach for you and your company.
Do not enter into an agreement without completing your due diligence. If you are purchasing a trademark, conduct searches with the USPTO, all 50 states, DBA filings, other government agencies, and online directories to make sure the seller actually has complete and unique rights in the offered property. Although your findings will not guarantee title, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the valuation and breadth of the mark. Consider hiring a professional to help in your investigation: comparing trademarks often requires a specialized understanding of what marks will be considered confusingly similar or deceptive.
If you are selling a trademark, make sure you own it. Although this may seem obvious, ownership of intellectual property is rarely clear-cut. For example, you may have a name that you think of as your trademark, but unless you have used it in business, you do not have rights in that mark. Even if you have been using a mark in your business, another company may have started using it before you and have priority rights in that mark. A thorough search of the relevant marketplace and registry office should be conducted before you attempt to sell your trademark.
Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly in the document.
Sign two copies of the assignment, one for you and one for the other party.
It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs.

The following provision-by-provision instructions will help you understand the terms of your assignment. The numbers and letters below (e.g., Section 1, Section 2, etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process.

Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest, and the Assignee is the party receiving it.
Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the trademark.
Section 1: Assignment of marks. The assignment and acceptance of the assignment of the trademarks and service marks. Note that the marks being assigned are not described in the agreement itself. The assignment references “Schedule 1,” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred. Note too the emphasis placed on the goodwill being sold with the property. Goodwill can be defined as the intangible value of a piece of property (e.g., a brand’s reputation and recognizability). Remember that this is an essential element of a trademark transfer: assignments attempted without goodwill are considered invalid.
Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
3(a): it is the owner
3(b): it has not sold or transferred the marks to any third party.
3(c): it has the authority to enter the agreement.
3(d): it does not believe that the marks have been taken from any third party without authorization (e.g., a knowing copy of another company’s trademark).
3(e): it does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
3(f): the marks weren’t created while the creator was employed by a third party. In many cases, if an individual was employed by a company and came up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the marks being sold. If you and the other party want to include additional representations and warranties, you can do so here.
4(a): has the authority to enter the agreement.
4(b) has enough funds to pay for the assignment.
If you and the other party want to include additional representations and warranties, you can do so here.
Section 5: No early assignment. Prevents the Assignee from re-transferring the marks, or using them as collateral for loans, until it has made complete payment of the money due under the agreement.
Section 6: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
Section 7: No further use of marks. Indicates that after the effective date of the agreement, the Assignor will stop using all of the trademarks being transferred and will not challenge the Assignee’s use of those marks.
Section 8: Indemnification. A description of each party’s future obligations if the trademark is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
Section 9: Successors and assigns. States that the parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
Section 10: No implied waiver. Explains that even if one party allows the other to ignore or break an obligation under the agreement, it does not mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.
Section 11: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write a mailing address for both the Assignor and the Assignee.
Section 12: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
Section 13: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city—much less the same room—this provision ensures that business can be transacted efficiently without sacrificing the validity of the agreement as a whole.
Section 14: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
Section 15: Entire agreement. The parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
Section 16: Headings. Notes that the headings at the beginning of each section are meant to organize the document and should not be considered operational parts of the note.
Schedule 1: List of trademarks and/or service marks. In order for a trademark assignment to be effective, the marks being transferred must be clearly identified. Be thorough in your description and attach any registrations or samples that you may have. If you do include samples, reference the inclusion of those samples in the schedule (e.g., “See attached drawing.”).

What is a Trademark Assignment? How Do I Assign Trademark Rights?

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another. In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public. Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee. In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment. This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO). This should be done electronically using the Electronic Trademark Assignment System ( ETAS ). You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal). It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark. In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark. If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below. I look forward to hearing from you soon.

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Trademark Assignment: How to Transfer Trademark Ownership

Trademarks are valuable representations of the goodwill of your business that connects a specific product to your brand for your consumers. As your startup or business matures (or if you acquire a company) you will likely need a trademark assignment agreement. This is a type of agreement for transferring ownership that provides a variety of business benefits necessary for protecting purchased or transferred trademark rights.

What Is Trademark Assignment?

A trademark assignment is the formal process for transferring the ownership of a trademark and the associated rights that ownership provides (e.g., use, licensure, further assignment, etc.). Often, a trademark assignment is part of a larger transaction such as an asset purchase agreement or a corporate reorganization.

When Is the Assignment of Trademark Procedure Necessary?

You will need an assignment of trademark any time you are transferring trademarks permanently. Such transfers can be within a larger corporate structure (e.g., from a parent company to a subsidiary), to a family member (e.g., via an estate administration), or to an outside party via sale.

For situations that don’t involve the owner of the trademark transferring to a new owner, you may consider a trademark licensing agreement. Unlike a trademark assignment, a license does not transfer ownership, and instead, gives the rights commonly associated with ownership. For example, you typically see trademark licensing in the context of franchise agreements, merchandising, endorsement deals, etc.

Here’s How to Transfer Trademark Ownership

The process for transferring a trademark via assignment may vary depending on the context of your situation. Relevant to determining the process will be the nature of the transaction along with the relationship between the assignee and assignor. Your checklist will also vary depending on if you are the buyer or seller of the trademark. That said, you will generally consider the following steps for a complete assignment:

Due diligence
Determine authority to transfer the trademark
Execute trademark assignment agreement (What should be included in a trademark assignment form)
Complete ancillary agreements necessary to give effect to trademark transfer
Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership

1. Due Diligence

Not all trademarks are created equally because of their rights that exist in common law and through statutory law at the state and federal levels. As a result, it’s important to research the trademark status before taking possession. Primarily, you will want to search for its registration number with applicable state and federal agencies (i.e., the USPTO). Having a registered mark improves your ability to enforce against trademark infringement and protect its value after acquisition as part of the goodwill of the business.

2. Determine Authority to Transfer the Trademark

Another integral part of transferring a trademark through an assignment is verifying that the assignor has the authority to transfer the title to the assignee. Your Florida trademark lawyer will be able to help you verify that authority, but you will generally check in two ways. The first will be confirming ownership reflected on trademark registration documents recorded with the USPTO. However, you will also want to confirm that ownership and authority via the business entity organizational documents.

3. Execute Trademark Assignment Agreement

After completing proper due diligence, you will need to execute a trademark assignment agreement. The purpose of the agreement is to provide evidence of the transfer and to allocate rights and obligations among the assignor and assignee.

What Should Be Included in a Trademark Assignment Form?

The contents of your trademark assignment agreement will also depend on the nature of the transaction and the relationship between the original owner and the new owner of the mark. Typically, you will see the following elements with a trademark assignment form contract:

Names of the parties and the agreement’s effective date
Recitals explaining the circumstance for the trademark transfer (e.g., gift, reorganization, purchase asset agreement, etc.)
Consideration for the intellectual property transfer (e.g., value exchanged such as cash, real estate, or other personal property
Representations and warranties surrounding past use, current owner, etc.
Indemnity surrounding past or future claims related to the use of the trademark
Conflict resolution provisions (e.g., mediation, arbitration, governing law, choice of venue, etc.)

4. Complete Ancillary Agreements

As mentioned above, transferring ownership of the trademark is likely part of a larger transaction such as the sale of a company. This fact usually means you will need to complete other contracts and documents for the assignment to be enforceable. To name a few, such documents might include:

Asset purchase agreement
USPTO forms
Assumption of liability agreement
Intellectual property licensing agreements
Corporate consent resolutions

5. Notify the USPTO of Change of Ownership

Part of a complete assignment of a trademark will require finishing the USPTO application process for a name change on the trademark registration. It’s important to notify the USPTO of the change in ownership and to update contact information for future correspondence related to your trademark. Additionally, maintaining accurate information with the USPTO for your registered trademark is necessary for protecting your trademark rights against infringement, dilution, and other legal issues.

What Are the Implications if a Trademark Transfer Is Not Done Properly?

Failing to properly transfer a trademark from one party to another can lead to exposure and create unnecessary risk. Most of the consequences stem from the fact that improper trademark transfers create confusion about who actually owns the mark. If uncertainty exists about proper ownership, it can make it more difficult to enforce your trademark rights and protect against future trademark infringement or track trademark infringement statute of limitations .

When it appears multiple parties have rights to a trademark, it can also create a risk of trademark dilution (i.e., its use becomes more in the public domain, weakening its proprietary value). As a final point, trademark transfers are usually part of a broader transaction, and failing to properly execute the assignment may jeopardize the success of the whole transaction or, at the least, substantially add to the closing costs.

As detailed above, a trademark assignment form should provide all of the information surrounding the transfer (e.g., party names, effective date, value transferred, warranties, etc.). Additionally, the assignment should provide for more general contract terms related to termination rights, conflict resolution methods, indemnities, and necessary cross-references with any simultaneously entered into agreements.

Need Help with a Trademark Assignment Agreement?

If you are in the process of buying, selling, or otherwise transferring a trademark, then a trademark assignment agreement will be a key document for establishing and protecting those trademark rights. The trademark attorneys at our firm help clients draft and negotiate these agreements along with related legal advice and services such as representations in front of the USPTO.

Contact Cueto Law Group today to properly transfer ownership of a trademark.

Trademark Assignment Template Sample

Below are a PDF and Word version of a trademark consent agreement template that you can review as a trademark assignment agreement sample. As a reminder, these are just sample forms and further modification is likely necessary to meet any particular assignment needs.

Key Takeaways on How to Transfer a Trademark

When transferring a trademark, two fundamentals will be essential for increasing the chances of a smooth transition. The first is having sound documentation and contracts (i.e., an assignment agreement) in place between the assignor and assignee. The second is confirming that all applications and registrations with the USPTO accurately reflect that new proprietorship.

Can You Use an Asset Purchase Agreement in Place of a Trademark Transfer Agreement?

How do i submit a trademark assignment to uspto, do patent assignments need to be recorded.

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I knew our firm would be successful if we built a firm based on a philosophy of valuing relationships with our clients and their legal needs. To create a culture of thoughtful advice and personal service. I’m proud to say it must be working.

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Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

By Eric Perrott, Esq.

Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred.

A trademark could be a word, a phrase, a symbol, or even a shape. However, one thing all different forms of trademarks share are that they represent a single source. They are essentially a shortcut for consumers to bring to mind a company’s quality, customer service, and even values, at a glance. A trademark only has value because of the impact it has on consumers and the exposure consumers have had to that brand.

When transferring a trademark, simply allowing another company to use the trademark is not enough. You must transfer not only the right to the word or image, but also the underlying goodwill behind the trademark.

It is crucial that trademark owners properly transfer, or “assign” their trademarks to avoid delays, confusion, or worst of all, a break in title that could invalidate the earlier use of the trademark and ruin the value of the trademark.

A Trademark Assignment Transfers Trademark Rights

A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a “transfer of goodwill” – this is written fully as a transfer of “(1) all the property, right, title and interest in and to the Trademark including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the Trademark is used and which is symbolized by the Trademark; (2) all income, royalties, and damages hereafter due or payable to Assignor with respect to the Trademark, including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark; and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademark.”

By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights. However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark.

If the goodwill is not transferred, the new owner is essentially stating that they will not work to maintain the mark’s reputation among consumers.

Common Issues with Preparing and Filing Assignments

When filing an assignment, either current or in the past, the assignment requires:

the proper names of owners – if business entities, then complete names of active business entities
the date any transfer took place, whether in the past or on the date of signing
the language above for all goodwill and interest and rights to sue for past infringement
signatures of both the assignor and assignee – or qualified representatives of those entities

This may seem simple, but when completing a trademark assignment, it is important to understand why each of these items are needed in order to ensure that the transfer is done correctly. The mere fact that the USPTO accepts a recordation of an assignment does not mean it is valid.

One common pitfall of attempting to file an assignment yourself is mixing up assignor or assignee, writing the wrong owner, or assigning the mark to an individual and not a business entity. Before assigning a trademark, ensure that you consider why the transfer is taking place.

For example:

You may be transferring a trademark from one company you own to another as a restructuring of assets, such as a holding company or a change in tax status.
You might have sold the business and all underlying trademark rights in the business name.
You may be transferring a mark according to a will or bankruptcy.
You may be transferring from your name, personally, to a newly created entity

All of these situations have their own nuances and it is easy to confuse who owns the rights with who is receiving them. No matter what, ensure that your assignment matches the owner on the trademark registration. Sometimes a trademark might change hands two or three times, with a few corporate name changes in the middle. You should be able to draw a straight line from the original owner to the new owner, and each step must be documented with the USPTO to ensure the recordation is valid. It might be a multi-step process involving multiple parties and, while complicated, it is essential that the ownership and chain-of-title are both correct.

Another common pitfall occurs when filing other documents, such as renewals. The filer is required to sign a sworn statement that the owner is correct. If the old owner files a renewal in the name of the old organization, the owner may have made a sworn statement that it was the owner of the mark, which could cause delays or even prejudice the registration in future proceedings.

Similarly, if the new owner files, they cannot simply change the name in the renewal. This will cause significant delays, as they will need to prepare an assignment and record it with the USPTO’s assignment branch before the renewal can be filed. If close to deadlines, this could get extremely complicated and cause additional fees or potential loss of rights.

Trademark assignments are an important part of the trademark lifecycle, as they allow trademark owners to buy and sell brands and further benefit from the goodwill represented by their brands. However, trademark owners should carefully consider the content of any assignment documents and ensure that they match the reality of the situation and the requirements of the USPTO.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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Trademark Assignment

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A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.

This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.

This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.

How to use this document

This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.

This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.

Once the form is complete, the parties can undertake the following steps:

1) Sign and execute the form in front of a notary (both parties)

2) Have the notarization completed

3) Record the Trademark Assignment with the United States Patent and Trademark Office

Applicable law

Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).

How to modify the template:

You fill out a form. The document is created before your eyes as you respond to the questions.

At the end, you receive it in Word and PDF formats. You can modify it and reuse it.

A guide to help you: How to Register A Trademark

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party. Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient. Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement. A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

All involved parties – the assignor and assignee – should be identified.
The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
Consideration must be listed (i.e. what each party is receiving).
List the effective date of the transfer.
Contract must be duly executed.
Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public. It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
Sale of business : A trademark owner may decide to focus on a different business or retire.
Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution. Documenting assignments after the fact is definitely not a best practice and can lead to many issues. It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive. An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue. A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor. A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized. Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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Back to Trademark ownership

What is a trademark assignment?

Written by Tomas Orsula

Senior Trademark Attorney

A trademark assignment is a document that is the grounds for the transfer of trademark ownership. It specifies the detail of the transfer, the assignor (the previous owner) and the assignee (the new owner). There are four types of trademark assignments:

complete - where all trademark rights are transferred, including royalties, rights to issue further transfers, etc.,
partial - where only access to certain goods or services is transferred,
assignment with goodwill - where the new owner is granted the right to use the trademark in relation to the same products and services as the assignor, meaning the assignee is allowed to retain the brand value of the trademark,
assignment without goodwill - where the assignee is not permitted to use the trademark in connection with the goods or services used by the assignor, thereby obtaining the trademark but not the brand value associated with it.

If you're interested in transferring the ownership of your trademark, our legal services offering includes the preparation of an assignment agreement.

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After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid , the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.

In contrast, if an assignment of a trademark is made without the mark’s accompanying goodwill, then it is considered an assignment “in gross” — and the assignment is invalid under U.S. law. Courts have analyzed whether an assignment was made in gross in a few different ways, but, as is the case with much of trademark law, protecting customers from deception and confusion is the primary motivation behind any analysis for determining the validity of an assignment.

One way courts determine if an assignment was made in gross is through the substantial similarity test. This test essentially examines whether the assignee is making a product or providing a service that is “substantially similar” to that of the assignor, such that consumers would not be deceived by the assignee’s use of the mark. This analysis includes an assessment of the quality and nature of the goods and services provided under the mark post-assignment. Thus, even if an assignee is using the mark on the same type of goods, but the goods are of lower quality than the goods previously offered by the assignor under the mark, the assignment could be invalid. However, slight or inconsequential changes to goods and services after an assignment are not likely to invalidate the assignment, as such changes are to be expected and would not thwart consumer expectations.

Decisions on the question of substantial similarity are only marginally instructive, as the test calls for a fact specific inquiry into what the consuming public has come to expect from the goods or services offered under a given mark. For example, courts have noted that despite similarities in services and goods, “even minor differences can be enough to threaten customer deception.” [1] Instances of products or services that were deemed not substantially similar (and thus resulted in invalid assignments) include: an assignee offering phosphate baking powder instead of alum baking powder; [2] an assignee using the mark on a pepper type beverage instead of a cola type beverage; [3] an assignee producing men’s boots as opposed to women’s boots; [4] an assignee using the mark on beer instead of whiskey; [5] and an assignee selling hi-fidelity consoles instead of audio reproduction equipment. [6]

Conversely, case law has also shown that substantial similarity can be found even when products or services do differ in some aspects, if consumers aren’t likely to be confused. For example, the following product changes did not result in a finding of an invalid assignment: an assignee offering dry cleaning detergent made with a different formula; [7] an assignee using thinner cigarette paper; [8] and an assignee selling a different breed of baby chicks. [9]

Whether goods or services are substantially similar may seem like an easy test to apply, but, as case law demonstrates, this fact-intensive analysis can yield results that look strange in the abstract. Disputes involving the validity of a trademark assignment are decided on a case-by-case basis, using the specific facts at hand to determine if consumer expectations are being met under the new use. Thus, while trademarks acquired through assignment can have significant value (and grant the assignee important rights formerly held by the assignor), assignees should be wary of changes to goods or services under an acquired mark that could be seen as deceiving the public.

[1] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[2] Independent Baking Powder Co. v. Boorman , 175 F. 448 (C.C.D.N.J.1910).

[3] Pepsico, Inc. v. Grapette Company , 416 F.2d 285 (8th Cir. 1969).

[4] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[5] Atlas Beverage Co. v. Minneapolis Brewing Co. , 113 F.2d 672 (8 Cir. 1940).

[6] H. H. Scott, Inc. v. Annapolis Electroacoustic Corp. , 195 F.Supp. 208 (D.Md.1961).

[7] Glamorene Products Corp. v. Procter & Gamble Co. , 538 F.2d 894 (C.C.P.A. 1976).

[8] Bambu Sales, Inc. v. Sultana Crackers, Inc. , 683 F. Supp. 899 (1988).

[9] Hy-Cross Hatchery, Inc v. Osborne 303 F.2d 947, 950 (C.C.P.A. 1962)

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Navigating the world of trademark assignments can be a complex endeavor, fraught with potential pitfalls and legal nuances. As a business selling services or goods, understanding the ins and outs of this process is crucial to protecting your brand and intellectual property. This article aims to shed light on avoiding common mistakes often made during trademark assignments and offers guidance on how to avoid them. With a clear, informative tone, we'll delve into the intricacies of drafting a trademark assignment , procedural errors, post-assignment considerations, and the importance of legal assistance. By the end of this article, you'll be better equipped to handle your trademark assignments with confidence and precision.

Common Mistakes to Avoid in Trademark Assignment

Trademarks are unique identifiers that distinguish a business's goods and services from its competitors. They play a crucial role in building brand identity and fostering consumer trust. Therefore, assigning trademarks is not a task to be taken lightly. It requires a thorough understanding and meticulous handling. With this in mind, let's delve into the world of Trademark Assignment and learn how to sidestep common mistakes.

Decoding Trademark Assignment and Its Role

Let's begin by defining Trademark Assignment. Simply put, it's the legal process of transferring ownership of a registered or pending trademark from one party (the assignor) to another (the assignee). Much like selling a property, the assignee gains all rights, benefits, and privileges associated with the trademark, while the assignor relinquishes all rights to it.

Trademark Assignment serves several strategic purposes. It allows businesses and individuals to transfer the responsibility and benefits of a trademark to others. For companies undergoing mergers, acquisitions, or restructuring, Trademark Assignment ensures a seamless transition of trademark ownership and rights. Alternatively, an entity may choose to sell or assign its trademarks to streamline its intellectual property portfolio or for financial gain.

Moreover, Trademark Assignment is a cornerstone of franchising. Franchisors often assign trademarks to franchisees, allowing them to use the franchisor's trademarks. This arrangement benefits the franchisee by leveraging the established reputation and goodwill of the trademarks. Importantly, the franchisor maintains control over the quality of goods or services provided under the assigned trademarks, thereby preserving the brand's integrity and trust.

Understanding the intricacies of Trademark Assignment and its role in business operations underscores the importance of avoiding common errors. Let's delve into these mistakes and their avoidance strategies, as these missteps can lead to expensive corrective measures and potential disputes.

Steering Clear of Common Drafting Errors in Trademark Assignment

Trademark Assignment, like any legal document, requires meticulous attention to detail. The language used must be legally sound and accurately represent the intentions of all parties involved. Failure to do so can lead to legal disputes or even render the assignment null and void.

A frequent error in drafting a Trademark Assignment is the inadequate or inaccurate definition of the trademark being transferred. It's important to remember that a trademark isn't just a name, logo, or slogan. It encompasses associated goodwill, rights accrued through usage, renewal rights, and more. An incomplete or vague description can lead to disagreements and potentially derail the entire assignment process.

Another common oversight is the unclear transfer of associated rights. The rights tied to a trademark are multifaceted, including the right to use the mark, the right to license its usage to others, and the right to enforce against infringement. The assignment must clearly state which rights are being transferred and which are being retained, if any.

There are other crucial elements involved in drafting a Trademark Assignment, such as defining the consideration or the value received for the trade. We'll delve into these aspects and the common mistakes made in the following sections, aiming to provide a comprehensive understanding of the trademark assignment process and how to sidestep potential obstacles.

Accurate Definition of the Trademark and Transfer of Rights

A common, yet easily rectifiable, mistake in drafting a Trademark Assignment is the inadequate definition, identification, and description of the trademark. It's crucial to accurately and fully describe the trademark that's intended to be transferred. Any ambiguity can lead to misunderstandings, disputes, or even the invalidation of the entire assignment document.

Avoiding this mistake begins with a thorough review of your trademark portfolio and a clear identification of the trademarks to be transferred. The trademark should be detailed in the assignment, using its complete and exact name, depiction (for design marks), or sound (for sound marks), and including its registration number if registered. For unregistered marks, provide a detailed description of the mark's use, including the specific goods or services with which it is used. A precise and comprehensive identification strengthens your Trademark Assignment.

Transferring rights is equally important. It's necessary to not only transfer the trademark ownership but also stipulate the transfer of any associated rights. These may include the exclusive right to use the mark, the right to license its usage to others, the right to enforce the mark against infringement, and more. These rights are inherently tied to the trademark — transferring the mark alone, without explicitly transferring these rights, can lead to an incomplete assignment. Ensure the assignment document clearly states the transfer of any associated rights, providing complete control to the assignee.

Understanding the Role of Consideration in Trademark Assignment

Consideration is a crucial element in a Trademark Assignment that is often neglected. In the realm of trademark law, consideration is what one party gets in return for the transfer of trademark rights. This could be in the form of money, company shares, products, services, or any other benefit agreed upon by both parties. The importance of consideration lies in its legal enforceability - many jurisdictions may not uphold an agreement without it.

Regrettably, a number of assignments do not adequately address consideration, either by completely disregarding it or by insufficiently defining it. This could lead to future disputes or even a court ruling that the assignment is void due to lack of consideration.

To prevent such issues, it is vital that your Trademark Assignment clearly outlines the consideration involved. This includes detailing its form, whether monetary or non-monetary, and its agreed-upon value. If there's no explicit consideration, it's important to state that the assignment is made in consideration of other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged.

It's important to note that the consideration provided must be agreed upon by all parties involved in the assignment. It cannot be a decision made by one party alone. Therefore, it's crucial to discuss, agree upon, and clearly document this aspect in the assignment. Doing so not only solidifies the validity of the trademark assignment but also offers legal protection to all parties in case of future disputes.

Steering Clear of Procedural Errors in Trademark Assignment

While the drafting of the assignment document often takes center stage, procedural errors during the execution of the trademark assignment can easily slip through the cracks, leading to unnecessary complications. The assignment process extends beyond the drafting of the document and involves a series of steps aimed at ensuring the legitimate, binding, and official transfer of trademark rights.

Two common areas where procedural errors occur are in recording the assignment and in the correct execution of the assignment. Similar to real estate transactions, it's not enough to simply sign a deed transferring ownership; this deed must be recorded in the appropriate land records office to provide public notice of the transfer and to secure the rights of the new owner. The same principle applies to trademark assignments. Once the assignment document has been executed, it must be recorded with the relevant regulatory body, depending on the jurisdiction. Failure to do so could impact the validity of the assignment and create issues for the assignee when enforcing the trademark rights in the future. Therefore, recording the assignment is a critical step that should not be overlooked.

Another common procedural error occurs during the execution of the assignment document. This often includes missing signatures, lack of witnesses where required, or incorrect identification of the assignor or assignee. Any of these mistakes can undermine the validity of the assignment. It's therefore essential to understand and adhere to the formalities of executing the document correctly, based on the requirements of the jurisdiction where the trademark is registered.

Recording the Assignment

Recording the assignment is a critical step in the trademark assignment process. It serves as an official declaration that the trademark ownership has transitioned from the assignor to the assignee. In many jurisdictions, this is not just a recommended practice but a legal necessity for the assignment to be valid and for the assignee to lawfully exercise their rights under the trademark.

Regrettably, some businesses fall into the trap of thinking that just executing the assignment is enough and fail to properly record the assignment. This oversight can jeopardize the assignee's ownership and associated rights.

To circumvent this, it is imperative to record the assignment with the official trademark registry of your jurisdiction after the assignment agreement has been executed. This typically involves submitting the original or a certified copy of the assignment document along with all necessary information and forms, and paying the required recording fee. Not filing within the designated time frame could result in penalties and may impact the enforceability of the trademark rights.

Furthermore, it's crucial to record the assignment in all territories where the trademark is protected. For example, if the trademark is registered in multiple countries, the assignment must be recorded in each of these countries' respective trademark offices. While this process can be intricate and time-consuming, it's a vital step to safeguard the assignee's rights to the trademark.

Correct Execution of the Assignment

Proper execution of a Trademark Assignment is a fundamental step that is often overlooked, leading to common mistakes that can impact the legality of the transfer. A properly executed assignment formalizes the agreement between the transferor and the transferee regarding the transfer of trademark ownership and rights.

Common pitfalls in execution include missing signatures, incorrect identification of parties, and absence of proper witnessing. If these issues are not addressed, the validity of the assignment can be challenged later, potentially leading to legal disputes.

To prevent these problems, it's vital to ensure all parties involved have a clear understanding of their roles and responsibilities and confirm that all necessary signatures are present and accurately documented. The names, titles, and addresses of the signing authorities should be accurately listed. Additionally, the signatures should be properly witnessed as per the jurisdiction's requirements.

Finally, it's important to remember that the specific requirements for a valid execution can vary from one jurisdiction to another. Therefore, it's recommended to consult with a legal professional to understand the specific requirements of your jurisdiction and ensure that the assignment agreement is executed correctly and is legally binding.

Steering Clear of Post-Transfer Missteps

Upon the successful completion of a trademark assignment, it's easy for businesses to fall into the trap of complacency, believing their job is done. However, this mindset often leads to the neglect of crucial post-transfer duties associated with owning trademark rights. Ignoring these responsibilities can trigger unexpected issues, potentially diminishing the value of the trademark or even causing the rights to dissolve entirely.

The most frequently encountered post-transfer errors involve the upkeep and renewal of trademarks, along with the monitoring and enforcement of trademark rights. If these tasks are neglected, the protection offered by the trademark could lapse, leaving it vulnerable to infringement. Similarly, without diligent monitoring and enforcement, illicit use of the trademark may go unnoticed, leading to a dilution of its value.

Understanding these responsibilities is vital. Ownership of trademark rights is not a one-off event but an ongoing commitment requiring vigilance, attention, and legal compliance to safeguard and enhance the value of your trademark rights.

Upkeep and Renewal of Trademarks

One cannot overstate the importance of proper upkeep and renewal of trademarks following a trademark assignment. Neglecting to renew a trademark in a timely manner can result in the cancellation of its registration, leaving it unprotected and available for others to use. Moreover, failure to comply with maintenance requirements could lead to the trademark being deemed abandoned.

The specific actions and timings for maintaining and renewing trademarks can differ depending on the jurisdiction. Generally, it involves filing certain documents to demonstrate the ongoing use of the trademark and paying the necessary renewal fees within specified timeframes.

Common missteps include overlooking renewal dates, submitting incorrect or inadequate evidence of ongoing use, or failing to pay the required renewal fee. These errors can be expensive, potentially resulting in the loss of a valuable asset. Therefore, it's imperative for the new owner to comprehend these tasks and monitor all necessary dates and requirements to ensure the ongoing protection of the transferred trademark.

Setting calendar reminders, consulting with a trademark attorney, or employing a professional trademark management service are effective ways to ensure that you don't miss crucial renewal deadlines and maintenance requirements. Prioritizing these tasks is essential to securing your trademark rights for the long haul.

Understanding the Importance of Trademark Rights Monitoring and Enforcement

Once a trademark is assigned, the new owner takes on the critical tasks of monitoring and enforcing the trademark rights. Often, businesses overlook the significance of these responsibilities, which can compromise the potency and worth of their trademark.

Regularly monitoring for unauthorized trademark usage is essential. This includes keeping a close watch on trademark registries for similar applications, tracking competitor activities, and scouring online platforms for potential infringements. Neglecting this step can result in widespread unauthorized trademark usage, thereby diluting its uniqueness and value.

Enforcement, conversely, involves taking legal action against any infringement on your trademark rights. If unauthorized usage of your trademark is detected, swift action through legal avenues, such as issuing cease and desist letters or initiating infringement proceedings, is crucial. Inaction can diminish your trademark's protection and may even result in loss of exclusivity.

Both monitoring and enforcement demand time, resources, and a deep understanding of trademark laws, which can be a daunting task for businesses to manage on their own. Employing a professional trademark monitoring service and seeking legal counsel for enforcement actions can effectively manage these vital post-assignment tasks.

The Value of Legal Guidance in Trademark Assignment

The complexities of trademark assignment, as discussed in this article, underscore the necessity for legal guidance. The process involves understanding intricate legal requirements and procedures, from drafting the assignment document accurately to its correct execution, ensuring proper recording, and fulfilling post-assignment responsibilities. The potential for errors in any of these stages underscores the importance of legal assistance.

Legal guidance in trademark assignment extends beyond mere avoidance of common mistakes. It empowers businesses to fully exploit their transferred rights and aids in preventing future disputes related to the assignment. A trademark attorney can help navigate this complex legal terrain, providing invaluable assistance throughout the assignment process and beyond.

Why a Trademark Attorney is Essential

When navigating the complexities of trademark assignments, the expertise of a trademark attorney is invaluable. These professionals bring a wealth of knowledge and experience in trademark law, offering guidance that can preempt potential complications during the assignment process.

From the beginning, a trademark attorney can play a pivotal role in crafting the trademark assignment agreement. They can help define the rights being transferred and the consideration involved, eliminating any potential ambiguities. Furthermore, they can steer the parties involved through the proper execution of the agreement, ensuring all legal requirements are met.

Once the agreement is executed, the attorney can assist in officially recording the assignment. This crucial step, often neglected by business owners, must be done correctly and within specific timeframes. The attorney's role extends into the post-assignment phase, providing guidance on maintaining, renewing, monitoring, and enforcing the assigned trademark rights.

One of the key roles of a trademark attorney is to provide advice on potential issues before they escalate into significant legal disputes. This proactive approach facilitates a smooth assignment transition and helps protect the value of the trademark.

The Benefits of Legal Support

Engaging legal support during the trademark assignment process offers numerous benefits. Starting with the intricate task of drafting the assignment agreement, legal counsel can create a clear, comprehensive, and legally enforceable contract that accurately represents the intentions of all parties. This clarity can reduce the likelihood of misunderstandings, confusion, or future disputes.

During the execution and recording of the assignment, legal support can help circumvent procedural errors that might otherwise nullify the transfer or create legal issues. Crucially, an attorney can ensure that important deadlines and conditions are met, which is particularly important in jurisdictions where timing and execution method are critical.

In the post-assignment phase, the value of legal support increases. An attorney can oversee necessary maintenance and renewals, monitor for potential infringements, and take immediate action to enforce rights when required. This ensures the ongoing protection and value of the trademark are not compromised.

In summary, engaging legal support during a trademark assignment can save businesses significant time and potential costs by preventing costly errors and ensuring a smooth, compliant transfer of trademark rights.

1. What are some common mistakes to avoid when assigning a trademark?

Significant errors include neglecting to conduct an adequate search to ensure the mark's uniqueness, failing to understand the importance of the mark's representation and neglecting to maintain the trademark adequately.

2. Why is it necessary to conduct a thorough search before assigning a trademark?

An exhaustive search prevents the infringement of already registered trademarks. This safeguard prevents costly legal disputes and wasted resources in developing improperly claimed trademarks.

3. Is neglecting the nature of a mark's representation a frequent mistake in trademark assignment?

Absolutely, misunderstanding the representation of a mark diminishes its protection, as it directly ties to the scope of the product or service the mark represents.

4. What potential issues arise with inadequate maintenance of a trademark post-assignment?

Inadequate upkeep can lead to the loss of a trademark's rights. Regular use in commerce and timely renewal filings are integral to maintaining trademark rights.

5. What consequences can result from assigning a trademark without a proper agreement?

Without a suitable transfer agreement, misunderstandings can occur over the rights assigned, potentially leading to disputes or even loss of rights to the mark.

6. How relevant is not understanding the territorial restrictions in a trademark assignment?

Not understanding territorial restrictions can lead to limited enforcement and protection of a mark, reducing its value in markets outside the assigned territory.

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Trademark FAQs

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Disclosure of Public Information
Fastener Quality Act
Fastener Quality Act, Amendment of Insignia
Fastener Quality Act, Application
Fastener Quality Act, Basics
Fastener Quality Act, Change of Address
Fastener Quality Act, Change of Owner
Fastener Quality Act, Renewal/Reactivation
General, Popular
General, Other
Getting Started
Getting Started, Popular
Getting Started, Other
Madrid Protocol
Madrid Protocol, Basics
Madrid Protocol, Fees
Madrid Protocol, International Application
Madrid Protocol, Notice of Irregularity
Madrid Protocol, Subsequent Designation
Maintaining a Trademark
Maintaining a Trademark, Basics
Maintaining a Trademark, Section 8
Maintaining a Trademark, Sections 8 & 9
Maintaining a Trademark, Section 15
Maintaining a Trademark, Section 71
Native American Tribal Insignia
Native American Tribal Insignia, Basics
Native American Tribal Insignia, General
TEASi, Attorney/Representative
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TEASi, Contact Information
TEASi, Exclusions And Limitations
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TEASi, International Application FAQ's
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Trademark Electronic Application System (TEAS)
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Trademark Electronic Application System (TEAS), Miscellaneous Issues
Trademark Electronic Application System (TEAS), Non-Traditional Marks
Trademark Electronic Application System (TEAS), Payment, Fees, and Refunds
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Trademark Official Gazette
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Trademark Trial and Appeal Board (TTAB)
Trademark Trial and Appeal Board (TTAB), General
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Trademark Help - Disclosure of Public Information

If personally identifying information, such as your name or address, has been disclosed in the public record for an application or registration that you are not involved with, please send an informal written request to [email protected] to remove the information from the record.

Trademark Help - Fastener Quality Act - Application

FQA application forms are accepted by U.S. mail or email. The instructions on page two of the application contain all of the submission details. Forms should only be submitted via one method. Duplicate copies of forms are not to be submitted. If you wish to confirm receipt, please do not send a second copy with your request.

No. Multiple copies of FQA applications could lead to duplicative charges of FQA fees and duplicative recordals. Please choose one method to submit your FQA application - email or delivery by postal service or private courier. If you have any concerns as to whether or not your submission has been received by the USPTO, you may email [email protected] . Do not send another copy with your follow up email.

Please send requests for copies of recordals to [email protected] and include an address where a copy may be mailed.

The USPTO processes applications for recordal and renewal in the order in which they are received. In the event a submission does not contain all of the required elements, the USPTO will return the entire application, along with a letter explaining the missing elements. No fees are processed for incomplete applications. A new application containing all of the required elements must be submitted. Generally, processing time varies from 7 to 10 working days, with delays possible due to federal holidays.

After recordal of a new application, the owner or the owner's attorney of record, if provided, will receive a Certificate of Recordal depicting the mark, the owner's information, and the date of recordal from which renewals are to be calculated.

After processing a renewal application, the USPTO does not issue a new certificate. Renewals are noted in Office records and appear on the Insignia Registry when it is updated. The Registry is updated quarterly, typically in January, April, July, and October.

After an alpha-numeric designation is reactivated to the original owner, the USPTO will issue a new Certificate of Recordal with the new recordal date from which to calculate renewals. When a new owner files an application for re-activation, the new owner is not issued a new recordal date and only shall remain in active status until the expiration of the five year period that began upon the issuance of the alphanumeric designation to its original owner or to any time remaining in a renewal period granted thereafter. Thus, if a new owner requests reactivation with only a few months remaining until a renewal is due, the new owner must also file a renewal application in the time allowed or in the grace period, with the required late fee.

FQA application forms accompanied by checks or money orders for the required fees may be submitted by private courier or delivery service, though use of such methods is not encouraged. If used, however, submissions must be sent to the Trademark Assistance Center (TAC) at the USPTO's headquarters at the following address:

Trademark Assistance Center Madison East, Concourse Level Room C 55 600 Dulany Street Alexandria, VA 22314

Private couriers and delivery services cannot deliver to the US Postal Service mailing address provided on the application instructions.

FQA fees are Trademark Fees, but they require a "Description of Request" as being an "FQA application fee" or "FQA renewal fee" or "FQA late fee and renewal fee" as appropriate. If the Recordal is based on a U.S. Trademark Application or Registration, the application Serial Number or Registration Number must be included in the appropriate space. In the case of an application for a new recordal of an alpha-numeric designation, the "Description of Request" should indicate "New FQA alpha-numeric designation" or "renewal of recordal [please identify assigned alpha-numeric designation, e.g. 01PZ]". The credit card payment form may be found on the USPTO website at http://www.uspto.gov/forms/2038-fill.pdf .

Trademark Help - Fastener Quality Act - Renewal/Reactivation

Yes, an alphanumeric designation can be transferred or assigned, and reactivated upon application by the assignee. An application must include a copy of the pertinent portion of the document assigning rights in the alphanumeric designation to the new owner. The application must be filed within six months of the date of assignment. 15 C.F.R. §280.323(e)

Unless a new trademark application has been filed for the same mark, no. Certificates of recordal designated inactive due to cancellation or expiration of the trademark registration or abandonment of the trademark application on which the recordal is based cannot be activated. Recordals may only be based on a valid registration or pending application.

Yes, certificates of recordal designated inactive to due to the failure to maintain the recordal shall be deemed active only if the certificate holder files an application for recordal with the prescribed fee and attaches a copy of the expired certificate of recordal. 15 C.F.R. §280.320(e)

Trademark Help - Fastener Quality Act - Amendment of Insignia

No. An amendment of the mark in a trademark application or registration that forms the basis for a certificate of recordal will result in the Director of the USPTO declaring the recordal inactive. The certificate of recordal shall become inactive as of the date the amendment is filed. You may file a new application for recordal of the new version of the mark on the FQA registry.

Trademark Help - Fastener Quality Act - Change of Owner

Requests to update recordals with a change of name and/or change of address may be submitted to the FQA mailing address, or by facsimile to 571-273-8950, or to the [email protected] email box. Requests regarding any change of address or change of name must be filed no later than six months after the change.

Yes, once the ownership of the trademark on which an FQA recordal is based is assigned, the recordal by the previous owner is considered "inactive." The new owner may file a new application to record the same insignia on the FQA insignia registry in their name.

No, certificates of recordal designated inactive due to transfer or assignment of a trademark application or registration cannot be reactivated. An assigned trademark application or registration may form the basis for a new application for recordal on the fastener insignia registry by the new owner.

No. The Certificate of Recordal may not be transferred or assigned, but it may be amended only to show a change of name or change of address.

Trademark Help - Fastener Quality Act - Change of Address

Yes. The holder must notify the USPTO of name or address changes whether the certificate of recordal is in an active or inactive status.

15 C.F.R. §280.321

Trademark Help - Fastener Quality Act - Basics

The USPTO does not provide assistance in determining whether or not a manufacturer of fasteners must submit an application.

The following is from the National Institute of Standards and Technology Weights and Measures Division (Phone: 301-975-4019):

Fasteners covered under the FQA are defined as limited to bolts, nuts, screws and studs (having a nominal diameter of 6 millimeters/0.25 inch or greater), or direct tension-indicating washers that are through-hardened (or meet a consensus standard that calls for through-hardening) and manufactured to standards and specifications of consensus standards organizations or government agencies that require a grade mark.

Many fasteners are exempted from coverage including those:

- that are part of an assembly

- that are ordered for use as a spare, substitute, service or replacement part unless that part is in a package containing more than 75 of any such part at the time of sale or that part is contained in an assembly kit

- produced and marked as ASTM A 307 Grade A;

- produced in accordance with the ASTM F 432 standard;

- specifically manufactured for an aircraft if the quality is approved by the Federal Aviation Administration or by a foreign airworthiness authority;

- manufactured in accordance with the International Organization for Standardization (ISO) 9000, 9001, 9002, or TS16949; Quality system (QS) 9000; or other fastener quality assurance system defined by law; or

- manufactured to a proprietary standard.

To encourage the use of quality management systems such as QS 9000, fasteners are exempt from the FQA if they are manufactured in a facility using such a system.

New applications require a US $20 fee. Renewals are also US $20. If the renewal application is submitted within the six months after the fifth anniversary of the recordal, a late surcharge of US $20 is required in addition to the US $20 renewal fee. If a renewal application is not submitted by the end of the six-month grace period, the owner must reapply for the same mark in a "new" application, which must be accompanied by the US $20 application fee.

The Fastener Quality Act (FQA), Public Law 101-592, was signed by President George H.W. Bush on November 16, 1990. Since its enactment, the FQA has been amended three times (Pub L. 104-113, Pub L. 105-234, and Pub L. 106-34) to further clarify and define the requirements of the original FQA.

The FQA protects the public safety by: (1) requiring that certain fasteners sold in commerce conform to the specifications to which they are represented to be manufactured, (2) providing for accreditation of laboratories engaged in fastener testing, and (3) requiring inspection, testing and certification in accordance with standardized methods.

Trademark Help - General - Other

It is advisable to conduct a search of the office records before filing an application. A search for pending, registered and dead trademarks may be conducted on the USPTO website using the trademark search system or by visiting the Public Search Facility located on the first floor of the Madison East building at 600 Dulany St., Alexandria , VA 22313 between 8:00 a.m. and 8:00 p.m.

Also, certain information may be searched at a Patent and Trademark Depository Library (PTDL). To find your nearest PTDL, go to www.uspto.gov/go/ptdl . If you need assistance in searching for trademarks, you may wish to locate a U.S.-licensed attorney specializing in trademark law. Local bar associations and the Yellow Pages usually have attorney listing broken down by specialties.

A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

The USPTO allows you to access copies of the documents in almost all pending applications, as well as many registrations. The Trademark Status and Document Retrieval (TSDR) database allows you to view, download, and print documents contained in our electronic records. Also, for a fee you can request a copy of your trademark registration by contacting our Certified Copy Center .

A copy of the trademark registration is $3 per registration. Certified copies are $15 per registration. A certified copy of the registration is also called a “title and status,” as it will include the current status of the trademark and current ownership information according to our records. It will also include a certification statement, a seal, and an authorized signature affirming that the registration is an official USPTO copy. You can pay by credit card, USPTO deposit account, or by electronic funds transfer (EFT).

Please visit our Trademark Expo page .

Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. PLEASE NOTE: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "Interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

Trademark Help - General - Other - Fees & Payments - Fees – General Information - Other

Information is available in the Trademark fees section of the Fee schedule .

Trademark Help - Getting Started - Other - General

Complete an application using the Trademark Electronic Application System (TEAS) . You will need to respond to office actions and file notices of change of address, allegations of use and requests for extension of time to file a statement of use through TEAS. You can check the status of your application through the Trademark Status & Document Retrieval (TSDR) system. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 (press 1) or 1-571-272-9250 to request a paper form. For further information about the applying for a trademark registration, see Basic Facts about Trademarks .

It depends on the location of your domicile, specifically, the place you reside and intend to be your principal home or principal place of business (an entity's headquarters).

Yes, if you are a foreign-domiciled trademark applicant . You must be represented at the USPTO by an attorney who is licensed to practice law in the United States.
No, if you are a trademark applicant domiciled in the United States or its territories. Nevertheless, we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the registration process.

For more information, see the August 3, 2019 USPTO trademark rules change .

Most applicants use U.S.-licensed trademark attorneys for legal advice regarding the use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A U.S.-licensed private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls .

The filing fees for an application filed through the Trademark Electronic Application System (TEAS) are as follows:

$250 per class of goods or services for a TEAS Plus application that meets the requirements of 37 C.F.R. §2.22; or
$350 per class of goods or services for a TEAS Standard application.

If your application is filed based on a bona fide intent to use the mark in commerce, additional documents and fees will be required at a later time.

In general, you must file your application through TEAS , and pay the fee using a credit card, existing USPTO deposit account, or electronic funds transfer (EFT).

PLEASE NOTE: Fees are subject to change and should therefore be verified before submission to the USPTO. You may obtain the current schedule of fees .

Here are some specific benefits of having a federally registered trademark:

Constructive notice nationwide of the trademark owner's claim.
Evidence of ownership of the trademark.
Jurisdiction of federal courts may be invoked.
Registration can be used as a basis for obtaining registration in foreign countries.
See Recording your trademark with the U.S. Customs and Border Protection
See Computer Crime and Intellectual Property section of the Department of Justice

Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

Trademarks are registered with the United States Patent and Trademark Office (USPTO).

Federal trademark registration has several benefits:

Registration may be filed with the Customs and Border Protection (CBP) to prevent importation of infringing foreign goods.

There are times when you may desire a combination of copyright , patent , and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.

Owning a federal trademark registration on the Principal Register provides several advantages, including:

Public notice of your claim of ownership of the mark;
A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The ability to bring an action concerning the mark in federal court;
The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office's online databases.

No. Only a U.S.-licensed attorney may represent you before the U.S. Patent and Trademark Office (USPTO). He or she must be an attorney licensed to practice law in a U.S. state and be an active member in good standing of the highest court of that state. Attorneys from other countries, except Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED), may NOT practice before the USPTO.

The registration is valid as long as you timely file all post registration maintenance documents. You must file a "Declaration of Use under Section 8" between the fifth and sixth year following registration. In addition, you must file a combined "Declaration of Use and Application for Renewal under Sections 8 and 9" between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information read about keeping your registration alive .

You can find all USPTO's trademark forms in the Trademark Electronic Application System (TEAS). Two filing options are available for the initial application form: TEAS Plus and TEAS Standard. The TEAS application form allows you to pay by credit card, electronic funds transfer, or through an existing United States Patent and Trademark Office (USPTO) deposit account.

The USPTO cannot search your mark for you prior to filing. After filing, the USPTO will conduct a search and will refuse to register your mark if there is another registered or pending mark similar to yours.

No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. The most common reasons for refusing registration are because the mark is:

Likely to cause confusion with a mark in a registration or prior application;
Descriptive for the goods/services;
A geographic term;
Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP). The examining attorney may also issue requirements concerning, for example:

The goods and services listed in the application;
The description of the mark;
The quality of the drawing;

The specimens

You can play examples of sound marks at https://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples

You may receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency. See Caution: misleading notices for more information.

Trademark Help - Getting Started - Other

Once you receive a filing receipt containing the serial number of your application, you may check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at 571-272-9250 or 800-786-9199 (press 1).

After a trademark application is filed, the USPTO will conduct a search of the records as part of the official examination process. The official search is not done for the applicant but rather to determine whether a mark which has been applied for can be registered. You can conduct a search online using the trademark search system or by visiting the Public Search Facility , located on the first floor of the Madison East building at 600 Dulany St., Alexandria , VA 22313 , is open to the public from 8:00 a.m. to 8 p.m. , Monday through Friday, except Federal holidays. Assignment information is also available at the Patent and Trademark Depository Libraries throughout the United States.

Also, certain information may be searched at a Patent and Trademark Depository Library (PTDL). For information on the nearest PTDL, go to www.uspto.gov/go/ptdl . If you need to locate a U.S.-licensed attorney specializing in trademark law, local bar associations and the Yellow Pages usually have attorney listings broken down by specialties.

A trademark is intellectual property that may be transferred or sold. The law permits the transfer or sale of a trademark by means of a legal document called an Assignment. A properly executed assignment transfers all rights from the existing owner to another person (referred to as the Assignee). When the trademark is transferred, the Assignee becomes the new owner of the trademark and has the same rights as the original owner. The U.S. Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions.

Trademark assignments can be filed electronically through Assignment Center . You will need to have a USPTO.gov account with two-step verification to access Assignment Center. Assignment Center has answers to frequently asked questions about filing electronically.

Please note that with all assignments, the assignment information provided by the user will be recorded as provided and will not be verified or modified by the USPTO.

For additional information on filing a trademark assignment or documents affecting title, please call the Assignment Division between 8:30 a.m. and 5 p.m. Eastern Time on normal business days at (571) 272-3350 .

There are many factors that affect how long it takes to register a trademark. Look at our application process timelines for more detailed timeline information based on your filing basis. You can check the current processing wait times to find out how long your trademark filing could take.

Get information on the status of your application in the Trademark Status and Document Retrieval (TSDR) database or call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. You should check on the status of your applications every three months.

Your U.S. trademark registration grants you rights only in the U.S. If you want trademark protection in other countries, you must either: • Submit an international application through the Madrid Protocol , or • Submit a trademark application in each other country or regional trademark office.

If you have problems protecting or enforcing intellectual property rights in a foreign country, consult the IP Attaché Program page .

If you erroneously submitted a document containing personal information or confidential documents other than a driver's license, social security number, credit card account number, or banking account number that you do not wish to be part of the public record, you may petition the Director of the USPTO to remove it from public view. Trademark Rule 2.25 provides that "documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed." The Director will waive this rule only if the petitioner can provide evidence that an extraordinary circumstance exists that warrants the removal of this information. As noted above, driver's licenses, social security numbers, credit card information, and banking information may be removed upon an informal written request [email protected] . Payments properly made with a credit card, charge card or bank card via the Trademark Electronic Application System (TEAS) are confidential as well as secure, and are never made part of any publicly viewable USPTO record.

The USPTO records must always include the trademark owner's name and correspondence address and this information may be updated, but not removed. It also may be possible to provide redacted documents to replace portions of existing submissions that may be deemed personal or confidential if that information was not relied on during examination of the documents. Please note that after the USPTO renders a decision on the petition, the fee will not be refunded.

Last, as noted above, all documents submitted in connection with an application or registration become part of the record for that file, including the petition itself . Therefore, if your petition is granted, the petition and redacted document will remain in the USPTO records, although the personal or confidential information will be hidden from public view.

You can file your petition through the Trademark Electronic Application System (TEAS) . You should click on the overall Petitions Forms category from the TEAS front page and then select form number 3, Petition to the Director.

Yes. You can access forms through the Trademark Electronic Application System (TEAS), from our apply online page . TEAS can be used to file an application for registration of a mark, response to examining attorney's Office action, notice of change of address, amendment to allege use, statement of use, request for extension of time to file a statement of use, affidavit of continued use under 15 U.S.C. §1058, affidavit of incontestability under 15 U.S.C. §1065, combined affidavit under 15 U.S.C. §§1058 and 1065, or combined filing under 15 U.S.C. §§1058 and 1059. Additional forms may be available through the Trademark Assistance Center at 1-800-786-9199 (or 1-571-272-9250).

Generally, you will be required to complete application online, check it for completeness, and submit it using the Trademark Electronic Application System (TEAS) . You will also need to respond to office actions and file notices of change of address and many other documents through TEAS. You can check the status of your application using our Trademark Status and Document Retrieval (TSDR) system. For further information about applying for a trademark registration, see Basic Facts about Trademarks.

Yes. In general, you will be required to complete application online and submit it using the Trademark Electronic Application System (TEAS) . You can pay the fee by credit card, EFT, or through an existing USPTO deposit account.

No. The UPSTO will not accept an application transmitted by fax. Generally, applications must be filed electronically with the USPTO using the Trademark Electronic Application System (TEAS) .

You can file your change of address using the TEAS Change Address or Representation Form .

You can file your change of address using the TEAS Change of Address or Representation form .

Yes, if you are a foreign-domiciled trademark applicant . You must be represented at the USPTO by an attorney who is licensed to practice law in the United States.
No, if you are a trademark applicant domiciled in the United States or its territories. Nevertheless, we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the registration process. For more information about this, see the August 3, 2019 USPTO trademark rules change .

An international applicant must pay fees to the USPTO and to the International Bureau. The USPTO charges a fee for certifying international applications and transmitting them to the International Bureau, called a "certification fee." The certification fee is $100.00 per class if the international application is based on a single U.S. application or registration and filed electronically, or $200 per class if filed on paper. The certification fee is $150.00 per class if the international application is based on more than one U.S. application or registration and filed electronically, or $250 per class if filed on paper.

The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application and the number of classes of goods and services indicated in the international application. The schedule of fees, individual fees and International Bureau Fee Calculator are posted on the WIPO web site at: http://www.wipo.int/madrid/en/ . The international application fees must be paid directly to the International Bureau in Swiss francs.

The Freedom of Information Act (FOIA) mandates the USPTO to provide records such as trademark applications and registrations for public inspection and copying. In order to adhere to the FOIA, trademark applications and registrations are available on the USPTO website so that the public may conveniently inspect and copy them, if desired.

It is the responsibility of applicants and registrants to carefully consider the information provided to the USPTO to ensure that any information they wish to keep out of the public record is not included with their initial filing or in any subsequent filing submitted during the entire application and post-registration process. However, to file an application, certain minimum requirements must be met, including providing the owner's name and an address to receive correspondence. Any type of existing legal entity, including an individual, corporation, partnership, limited liability company, association, or joint venture, may own a trademark. An applicant need not provide a telephone number as part of the application process, although providing a telephone number aids the USPTO in its ability to contact applicants.

Yes. The public may use records of trademark applications and registrations to identify the owner of a trademark and/or their attorneys/representatives. This information is valuable to the public and is often used to perform a clearance search when another party is considering whether to use a mark.

Trademark applications and registrations are public records. Individuals and private companies may use this public information to create third-party access to these records. Please note that the USPTO is not responsible for how these entities present this publicly available information. This information includes correspondence addresses, email addresses, and phone numbers provided in the initial application, as well as any changes or updates made to this information throughout the prosecution of the application or maintenance of the registration.

Driver's licenses, social security numbers, credit card information, and banking information, can be removed upon an informal written request to [email protected] , because this highly sensitive personal information is not a filing requirement and therefore should be removed from the record immediately. Please note that any payments properly made with a credit card, charge card or bank card via the Trademark Electronic Application System (TEAS) are confidential as well as secure, and are never made part of any publicly viewable USPTO record.

Yes. Please be aware that when you apply for a trademark registration you are making a public record. Accordingly, all of the information and documents you provide to the United States Patent and Trademark Office (USPTO) during the prosecution of an application and maintenance of a registration are available to the public and will be viewable on the USPTO website even if the application abandons or the registration cancels or expires. Third-party websites and Internet search engines access and use this information, including your name as well as any addresses, phone numbers, or email addresses that you provide to the USPTO .

As noted above, the USPTO is required by law to maintain records of trademark applications and registrations and to make them available for public inspection. Once submitted, an application becomes part of the public record and continues to be part of the public record whether the application is abandoned or the registration is surrendered, cancelled, or expired.

You can view and download documents contained in the USPTO's electronic records using the USPTO's Trademark Status and Document Retrieval (TSDR) system, at http://tsdr.uspto.gov/ . To retrieve the records relating to your trademark, enter your application serial number or registration number and click the "Documents" button.

The date of the international registration is the date of receipt of the international application in the USPTO provided that the International Bureau receives the international application within 2 months of the date of receipt in the USPTO. If the International Bureau does not receive the international application within 2 months of the date of receipt in the USPTO, the date of the international registration will be the date of receipt by the International Bureau.

No. The international application must be filed through the USPTO. The USPTO must certify (review and confirm) that certain information in an international application based on a U.S. basic application or registration is the same as the information contained in the basic application or registration. The USPTO then forwards the international application to the International Bureau.

The countries that have joined the Madrid Protocol are called "Contracting Parties." A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO) website: http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8 .

No. If the irregularity concerns goods and/or services or classification, the applicant's response must be submitted through the USPTO, preferably one month before the due date.

No. Once an international application is submitted to the USPTO, it cannot be amended, changed, or corrected in any way. The applicant must contact the IB with any questions of concerns.

Yes. You can hand deliver your application between 8:00 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, except Federal holidays within the District of Columbia, to the following location:

Trademark Assistance Center James Madison Building - East Wing Concourse Level 600 Dulany Street Alexandria, VA

General - Trademark Help - Getting Started - Other

For information about applying for a trademark, read our Trademarks basics pages that cover important topics and critical application filing tips. To understand what to expect in the overall process, view the timelines for trademark processing . If you still have questions, contact the Trademark Assistance Center at 1-800-786-9199 (press 1).

You may conduct a search free of charge on the USPTO Web site using the trademark search system . You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 8:00 p.m. at the Public Search Facility, Madison East, 1st Floor, 600 Dulany Street, Alexandria, VA 22313. Use of the Public Search Library is free to the public. You may check on the status of an application or registration through the Trademark Applications and Registrations Retrieval (TARR) database. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 (press 1) or 1-571-272-9250 to check the status.

No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 and TMEP Chapter 1900 for further information.

The question of whether an application may be filed in the name of a minor depends on your state's law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which they are domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth their status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: "John Smith, United States citizen, (parent/legal guardian) of Mary Smith."

A completed application form submitted in hard copy or electronically as noted above.
The appropriate fee.
A drawing of the mark to be registered - this is true even if the mark is just an unstylized word.
Specimens of use of the mark if the application is based on actual use in commerce.

Paper applications and any accompanying communications or material should be addressed to: Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451

The "drawing" is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: "standard character" and "special form." For more information on the different types of drawings see our page on mark drawings .

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others. See the certification mark application page for more information.

The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.

Some contents linked to on this page require a plug-in for PDF file.

You can access a copy of your documents by using the TDR Application Programming Interface (API), which relies on specific URLs rather than the TSDR interface presented through the USPTO website. You should follow these examples:

To access all documents for Serial Number 72131351 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?sn=72131351
To access all documents for Registration Number 3,500,030 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?rn=3500030
To access all documents for Reference Number Z1231384 as a PDF, enter the following in your search box: http://tdrapi.uspto.gov/ts/cd/casedocs/bundle.pdf?ref=Z1231384

Perhaps. Because this depends on state law, the USPTO cannot provide a definite answer for all factual situations. You should consider contacting an attorney. Local bar associations and phone directories usually have attorney listings. Click here for further information.

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).

All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver's license number.

For more information, please consult the FAQs Personal Information in Trademark Records .

There are no specific requirements on where the "®" symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The "®" symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don't maintain the registration or it expires). Note: Because several foreign countries use "®" to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

There are three important restrictions on use of the "®" symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don't maintain the registration or it expires). Note: Because several foreign countries use "®" to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties. Time can be of the essence. Click here for further information.

The Applicant has six (6) months from the mailing date of the notice of allowance to file either a Statement of Use or an Extension Request .

If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a statement of use form, specimen and the required fee(s) within 6 months from the issue date the notice of allowance to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.

If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request form and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every 6 months calculated from the issue date of the notice of allowance until the statement of use is filed. A total of 5 extension requests may be filed.

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. For the guidelines for filing an assignment and the assignment form itself, click on Assignments or contact the Assignment Recordation Branch at 571-272-3350.

Once you receive a serial number for your application, you can check the status of your application through the Trademark Status and Document Retrieval (TSDR) system. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 to request a status check. You should check on the status of your pending application every 3-4 months. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using TSDR.

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here .

The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the "intent to use" basis. An "intent to use" basis will require filing an additional form and fee that are unnecessary if you file under "use in commerce."

A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).

A band name may function as a service mark for "entertainment services in the nature of performances by a musical group" if it is used to identify live performances.

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.

No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.

You may search the USPTO's Trademark Electronic Search System (TESS) database free of charge before filing or you may wish to hire an attorney to perform the search and assess the results for you. Alternatively, you can search the database at a Patent and Trademark Resource Center (PTRC). Information about PTRC locations can be found here .

If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of a "common-law" mark. No registration is necessary to use a "TM" or "SM" symbol and you may continue to use these symbols even if the USPTO refuses to register your mark. Those symbols put people on notice that you claim rights in the mark, although common law doesn't give you all the rights and benefits of federal registration.

You may only use the federal registration symbol "®" after the USPTO actually registers a mark, not while an application is pending. And it may only be used on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don't maintain the registration or it expires). Although there are no specific requirements on where the symbol should be placed relative to the mark, most businesses use the symbol in the upper right corner of the mark. Note: Because several foreign countries use "®" to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

Registration is not guaranteed and only money paid when not required may be refunded. For information on why registration may be refused, see Basic Facts About Trademarks .

It is advisable to conduct a search before filing your application. See TESS TIPS for further information.

A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits.

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used to refer to both trademarks and service marks.

A copyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work , to prepare derivative works , to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly , or to display the copyrighted work publicly.

A copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevant others from writing a description of their own or from making and using the machine. Copyrights are registered by the Library of Congress' Copyright Office .

There are times when you may desire a combination of copyright , patent, and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.

A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.

Other - Getting Started

Applications for trademarks used on regulated products (e.g. cannabis, drug paraphernalia, ivory, whalebone) and activities (e.g. gambling and wagering, retail stores featuring controlled substances) are subject to additional review. See more information on our Laws and regulations page .

Trademark Help - Madrid Protocol - Basics

The applicant should immediately send a request to withdraw the international application to the Madrid Processing Unit (MPU) mailbox at [email protected] . However, if the international application has already been assigned to a MPU Trademark Specialist for certification or automatically certified electronically, it may be too late.

The USPTO offers several stand-alone forms:

Application for International Registration
Subsequent Designation of an International Registration - to extend protection of goods/services to additional countries or extend protection of additional goods/services to previously designated countries
Response to a Notice of Irregularity

TEAS global form options for:

Replacement Request - request for the USPTO to note the replacement of a U.S. national registration with a registered extension of protection
Transformation Request - to request transformation of a cancelled international registration into a US national application
Declaration of Use or Excusable Nonuse under Section 71
Combined Declaration of Use & Incontestability under Sections 71 and 15
Petition to the Director to Review denial of certification of International Application

Yes. If the holder of an international registration is a national of, has a domicile in, or has a real and effective business or commercial establishment in the United States and the international registration is based on a U.S. application or registration, then the subsequent designation may be submitted to the USPTO using the electronic form provided through the Trademark Electronic Application System (TEAS) with a USPTO transmittal fee of $100. The holder also has the option of filing a subsequent designation directly with the International Bureau.

Trademark Help - Madrid Protocol - International Application

Generally, an international application must be filed electronically using the Trademark Electronic Application System for International Applications (TEASi) .

Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection the same as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party will grant protection of the mark in its country.

There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.

Yes. An applicant may either limit the goods and/or services at the time of filing the international application in the appropriate section of the form or limit them later with the International Bureau (IB) by submitting the required Form MM6 available at www.wipo.int/madrid/en/forms .

No. An applicant must file the appointment directly with the IB on Form MM12.

No. Applicant may not resubmit an international application using the same USPTO Reference Number. A new international application will receive a new USPTO Reference Number.

If the international application meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will certify that certain information in the international application is the same as the information in the U.S. basic application or registration and forward the international application to the International Bureau.

If the international application does not meet the requirements of 37 C.F.R. §7.11(a), then the USPTO will not certify the international application. The USPTO will notify the international applicant of the reasons why the international application cannot be certified. The certification fee is not refundable. The international applicant may promptly resubmit a corrected international application based on the same U.S. application or registration. The certification fees must be included with the new submission. Alternatively, the international applicant can file a petition to the Director to review the denial of certification. Timeliness of petitions is paramount as the international registration date may be affected if the petition is filed too late after issuance of the denial of certification.

By using the USPTO Reference Number assigned to an international application, information concerning an international application may be obtained in Trademark Status and Document Retrieval (TSDR) under the section titled "Madrid History" on the "Status" tab. Use the "Documents" tab of TSDR to view the actual petition that was filed and the processing documentation issued by the USPTO in granting or denying the petition.

Trademark Help - Maintaining a Trademark - Section 71

Yes, the holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal of the international registration with the International Bureau (IB). 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

The owner of the registration must file a §71 Declaration during the following time periods:

First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) on or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States, or in the six-month grace period immediately following, with payment of the grace period surcharge.
Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) within the year preceding the end of each ten-year period after the date of registration in the U.S., or in the six-month grace period immediately following, with payment of the grace period surcharge.

Yes. USPTO electronic forms for filing a §71 Declaration are available online at the USPTO website through Form #9 in the Registration Maintenance/Renewal Forms. >> File §71

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79' series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration. Registrations cancelled due to the failure to file a §71 Declaration cannot be reinstated or "revived." A new application to pursue registration of the mark again must be filed.

Please review the additional information on Madrid Protocol Maintenance Requirements .

Requests for renewal of an international registration must be filed directly with the International Bureau (IB). 37 C.F.R. §7.41(a) A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge. The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website . On-line renewals may be filed through the WIPO Marks E-Renewal System .

Trademark Help - Maintaining a Trademark - Section 15

Yes. The fee for filing a §15 Declaration electronically using the Trademark Electronic Application System (TEAS) is $200 per class of goods/services. The filing fee for a Sections 8 & 15 Combined Declaration is $325 per class.

Yes. There are electronic forms for filing a §15 Declaration, a combined §8 and §15 Declaration, and a combined §15 and §71 Declaration, using the Trademark Electronic Application System (TEAS). These forms may be filed separately as well in accordance with the specific requirements of each.

The USPTO neither examines the merits of §15 Declarations nor "accepts" §15 Declarations. However, the USPTO will review a §15 Declaration to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those §15 Declarations that meet all statutory requirements. Section 15 Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. 15 U.S.C. §1141m. Section 73 itself does not require a separate filing, but rather only establishes the time for filing. The §15 Declaration form may be used regardless of the original basis for registration.

A person who is properly authorized to sign on behalf of the owner may sign the §15 Declaration. That is:

A person with legal authority to bind the owner;
A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
An attorney as defined in 37 C.F.R. §11.1 who is qualified to practice under 37 C.F.R. §11.14 and who has actual written or verbal power of attorney or an implied power of attorney from the owner.

A §15 Declaration must include:

The registration number and the date of registration;
The fee for each class of goods/services in the registration to which the Declaration pertains;
A statement that: (a) the mark has been in continuous use in commerce for a period of five years subsequent to the date of registration, or the date of publication under 15 U.S.C. §1062(c), on or in connection with the goods/services recited in the registration and is still in use in commerce; (b) there has been no final decision adverse to the owner's claim of ownership of the mark for the goods/services, or to the owner's right to register the mark or to keep the same on the register; and (c) there is no proceeding involving the claimed rights pending in the USPTO or in a court of law and not finally disposed of; and
A signed and dated affidavit or declaration under 37 C.F.R. §2.20. verifying the statements above.

An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b).

A §15 Declaration is a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming "incontestable" rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

Yes. A §15 Declaration may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Declaration must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

No. The filing of a §15 Declaration is optional. An owner may choose to claim the benefits of incontestability by filing a §15 Declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.

Trademark Help - Maintaining a Trademark - Sections 8 & 9

Yes. The fee for filing a §9 Renewal electronically using the Trademark Electronic Application System (TEAS) is $300 per class of goods/services. The fee for filing a Combined Section 8 Declaration and Section 9 Renewal Application electronically is $425 per class of goods/services. There is an additional surcharge of $100 per class for filing a Section 9 Renewal Application electronically within the 6-month grace period, or a $200 fee per class for filing a Combined Section 8 Declaration and Section 9 Renewal Application electronically during the grace period.

A §9 Renewal Application must include:

A request to renew the registration signed by the registrant or the registrant's representative;
The registration number, mark and date of registration;
A name and address for correspondence; and
The filing fee.

Section 9 Renewal Applications are reviewed by trademark specialists in the Post-Registration Division. If the §9 Renewal Application is accepted, the USPTO will issue a notice granting the renewal. If the §9 Renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and any remedies available.

You can also view the status of your registration and view and download documents contained in the USPTO’s electronic records using our Trademark Status and Document Retrieval (TSDR) database. To retrieve the records relating to your trademark, enter your application serial number or registration number and click the “Documents” button. You can find your application serial number and your registration number on your registration certificate.

To renew a federal trademark registration, you must file an Application for Renewal under §9 of the Trademark Act, 15 U.S.C. §1059 in conjunction with a §8 Declaration. See the answer below.

Yes. Subject to the filing of §8 Declarations and §9 Applications for Renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.

Yes. USPTO electronic forms for filing a combined §8 declaration and §9 renewal application are available online at the USPTO website. >> File combined §8 & §9

Yes. The owner must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. See 15 U.S.C. § 1059. NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee. The USPTO has no authority to waive or extend the deadline for filing a proper §9 Renewal Application. Registrations cancelled due to the failure to file a §9 Renewal Application cannot be reinstated or "revived." A new application to pursue registration of the mark again must be filed. Because the time period for filing the 10-year §8 Declaration coincides with the filing of a §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce & Application for Renewal of Registration of a Mark Under Sections 8 & 9" ("combined form"). As noted above, the filing of timely §8 Declarations are required to avoid the cancellation of a registration.

Trademark Help - Maintaining a Trademark - Section 8

A §8 Declaration must include:

The registration number;
The name and address of the current owner;
The fee for filing the Declaration;
If the mark is in use: a statement that the registered mark is in use in commerce; a list of the goods/services recited in the registration on or in connection with which the mark is in use; and one specimen per class of goods/services. Examples of acceptable specimens are tags/labels affixed to the goods, and advertisements for services; and
A signed and dated affidavit or declaration under 37 C.F.R. §2.20. supporting the above statements.

The fee for filing a §8 Declaration electronically using the Trademark Electronic Application System (TEAS) is $125 per class of goods/services. There is an additional grace period surcharge of $100 per class of goods/services when filing electronically during the 6-month grace period.

If the owner of the registration is claiming excusable nonuse of the mark, the §8 Declaration must include:

A list of the goods/services in the registration on or in connection with which the mark is not in use in commerce; the date of the last use of the mark in commerce;
The date of the last use of the mark in commerce; the approximate date when use in commerce is expected to resume; details regarding the reason for nonuse; and specific steps being taken to resume use; and
A signed and dated affidavit or declaration under 37 C.F.R. §2.20 supporting the above statements.

The owner or a person who is properly authorized to sign on behalf of the owner may sign the §8 Declaration. That is:

Section 8 Declarations are reviewed by trademark specialists in the Post-Registration Division. If the §8 Declaration is accepted, the USPTO will send a Notice of Acceptance. If the §8 Declaration is refused, the Office will send an Office Action stating the reasons for refusal and any remedies available.

The owner of the registration must file a §8 Declaration during the following time periods:

First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court
Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter. See 15 U.S.C. § 1059.

NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

Yes. The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods. The USPTO has no authority to waive or extend the deadline for filing a proper §8 Declaration. Registrations cancelled due to the failure to file a §8 Declaration cannot be reinstated or "revived." A new application to pursue registration of the mark again must be filed.

A §8 Declaration of Continued Use is a sworn statement, filed by the owner of a registration, that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.

Yes. USPTO electronic forms for filing a §8 Declaration and a combined 10-year §8 Declaration and §9 Renewal Application are available online at the USPTO website. >> File §8

The Trademark Manual of Examining Procedure (TMEP) is available online at the USPTO website. This resource contains an explanation of excusable nonuse and examples of circumstances under which a claim of excusable nonuse has been accepted. See TMEP §1604.11. In general, nonuse must be temporary, and the owner must clearly demonstrate how the circumstances prevent use of the mark in commerce and what efforts are being made to resume use. Please note that nonuse due to the decreased demand for a product does not by itself constitute "excusable nonuse."

A §8 Declaration of Excusable Nonuse is a sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058.

No. Once the USPTO accepts the §8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another §8 Declaration until the next statutory filing period.

Trademark Help - Maintaining a Trademark - Basics

View the Post Registration Timeline for all Registrations except Madrid Protocol-Based Registrations for an overview of the process steps and time frames for maintaining a trademark registration. After a registration issues, to keep the registration "alive" or valid, the registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of your registration.
View the Post-Registration Timeline for Madrid Protocol-Based Registration for an overview of the process steps and time frames for maintaining a Madrid Protocol-based registration. After protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of your U.S. registration and the invalidation of protection of the international registration by the USPTO.

Trademark Help - Native American Tribal Insignia - Basics - Technical Information - Native American Tribal Insignia Database - Basics

The Native American tribal insignia database is a public collection database that is a component of the trademark search system , a larger database maintained by the United States Patent and Trademark Office (USPTO). This database records the official tribal insignia of federally or state-recognized Native American tribes, and we use it to help us examine applications for trademark registration. As part of the examination process, we determine whether trademarks may falsely suggest a connection to the tribal insignias of participating Native American tribes. See our Native American tribal insignia webpage for more information.

A federally or state-recognized Native American tribe may submit its official tribal insignia to the database by submitting a written request in compliance with the guidelines listed on the Native American tribal insignia webpage . You can submit your request electronically, by mail, by fax, or by hand delivery. We invite tribes to submit more than one tribal insignia. Please submit only one per request.

No. We do not investigate whether the tribal insignia is the official tribal insignia of the tribe that made the submission. We comply with every proper request to include tribal insignia in the database. See our Native American tribal insignia webpage for more information.

We make every effort to have TEASi available 24 hours a day, seven days a week. However, the site is sometimes down for scheduled maintenance, for which the USPTO generally posts advance notice. We recommend that you check the current server status and planned outages page before beginning the filing process. Sometimes the site is also down unexpectedly. Although we try to restore service as soon as possible, this does not always happen as quickly as we would hope. Because of the possibility of an unforeseen problem (such as site downtime or Internet connectivity issues), we do encourage you to plan ahead when filing papers electronically and not wait until the last minute to file time-sensitive papers with the USPTO.

All forms filed via TEASi are time/date stamped when received on the USPTO server, according to Eastern Standard Time (EST) and EST controls for purposes of determining the timeliness of a document. Any submission that arrives as of 11:59 p.m. EST will be given that day's filing date (i.e., regardless of the USPTO's "normal" business hours).

If your deadline is today and the document cannot be filed via TEASi due to an outage, you must use an alternative method of filing to ensure that the document is timely received in the USPTO. A deadline that falls on a Saturday, Sunday or federal holiday within the District of Columbia extends the due date to the next succeeding day that is not a Saturday, Sunday, or federal holiday. 37 C.F.R. §2.196. See TMEP §308 .

Trademark Help - TEASi - Priority Claim Information

If the country of earlier filing is the United States, click the "Retrieve GS" button to populate Class and goods/services data automatically. Otherwise, you must use the pull-down box to enter the number of classes you wish to add, and then click on the "Add Classes" button.

Enter the filing date of the application that is the basis for the priority claim. NOTE: In accordance with Article 4(c)(3) of the Paris Convention, where the last day of the six-month period from the claimed priority date is a day when the Office of origin is not open for the receipt of requests to present international applications, the six-month period will, where the international registration bears the date of the receipt by the Office of origin of the said request, be extended until the first following working day at the Office of origin; similarly, where the international registration bears the date of the receipt of the international application by the International Bureau (IB), or a subsequent date, and the last day of the six-month period is a day when the IB is not open to the public, the six-month period will be extended until the first following working day at the IB.

An international applicant may assert a priority claim for a trademark application filed in another country, prior to the filing of the international application. If recognized by the International Bureau (IB), this claim may result in an international registration date that is earlier than the date of filing of the international application.

In accordance with Article 4(c)(3) of the Paris Convention, where the last day of the six-month period from the claimed priority date is a day when the Office of origin is not open for the receipt of requests to present international applications, the six-month period will, where the international registration bears the date of the receipt by the Office of origin of the said request, be extended until the first following working day at the Office of origin; similarly, where the international registration bears the date of the receipt of the international application by the International Bureau (IB), or a subsequent date, and the last day of the six-month period is a day when the IB is not open to the public, the six-month period will be extended until the first following working day at the IB.

Trademark Help - TEASi - International Application FAQ's

To open a current account for the settlement of fees at WIPO's International Bureau (IB), you must file a signed request for the opening of the account, together with the payment of an initial deposit. The current accounts will be kept only in Swiss francs at the headquarters of WIPO in Geneva. An initial deposit of at least 5,000 Swiss francs (CHF) is recommended. For further information on establishing an account at WIPO, review the Current Account at WIPO's International Bureau page .

Under 37 C.F.R. §7.11(a), the United States Patent and Trademark Office (USPTO) will grant a date of receipt to an international application that is submitted through the Trademark Electronic Application System International (TEASi) and contains all of the following:

1. The filing date and serial number of the U.S. basic application and/or the registration date and registration number of the U.S. basic registration; 2. The name of the international applicant that is identical to the name of the applicant or registrant as it appears in the basic application or basic registration and applicant's current address; 3. A statement that the applicant is entitled to file an international application in the USPTO, specifying that applicant: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment. 4. An e-mail address for receipt of correspondence from the USPTO. 5. A reproduction of the mark that is the same as the mark in the basic application and/or registration. 6. A color claim as detailed in § 7.12, if appropriate; 7. A description of the mark that is the same as the description of the mark in the basic application or registration, as appropriate; 8. An indication of the type of mark if the mark in the basic application and/or registration is: (1) a three-dimensional mark, (2) a sound mark, (3) a collective mark, or (4) a certification mark; 9. A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and 10. Fees in the nature of: (1) the USPTO certification fee, (2) the international application fees for all classes, and (3) the fees for all designated Contracting Parties identified in the international application.

Yes, TEASi form works on all iOS, Android and Windows mobile devices.

Pre-Populated Form: The pre-populated form will automatically display the exact information that is already in the USPTO database for one specific serial number of a U.S. basic application or a U.S. basic registration number. If you do not change any data fields, the USPTO will directly submit information that must be certified to WIPO's International Bureau (IB), without independent review of this data at the USPTO. Alternatively, this form may be used where certain data fields can be changed (e.g., either narrowing the scope of the identification of goods and/or services in the U.S. basic application or registration, and/or substituting a color drawing of the mark, where the original mark is shown in the USPTO database as a black-and-white image); however, if any data field is changed, an independent review of this data will occur by the USPTO's Madrid Processing Unit before the form will be forwarded to the IB.

Free-Text Form: The free-text form must be used if: (1) the application for international registration is being based on more than one serial number of a U.S. basic application or a U.S. basic registration number; (2) data is being changed in any way other than only narrowing the scope of the identification of goods and/or services in the U.S. basic application or registration and/or substituting a color drawing of the mark, where the original mark is shown in the USPTO database as a black-and-white image; or (3) the U.S. basic application being used as the basis is not yet loaded into the Office's database at the time of filing, e.g., immediately after a U.S. application was filed. Information on this form is not automatically certified, and will not be submitted directly to the IB. Instead, the form will be routed to the USPTO's Madrid Processing Unit for review. If all elements required for certification are supplied, the form will then be forwarded to the IB.

Trademark Help - TEASi - Fees

The number of a current account that has been opened with the International Bureau (IB).

In addition to the USPTO certification fees, there are fees that must be paid to WIPO. These WIPO fees payable in connection with the filing of an international application consist of: (1) the basic fee (WIPO's fee for processing the international application) and (2) either the complimentary fee(s) or the individual fee(s), depending on the Contracting Parties designated. An additional fee is required for the submission of any color image. The calculation can be determined from the WIPO fee calculator. The total is reflected in U.S. dollars, as converted from Swiss francs. See WIPO's website at http://www.wipo.int/madrid/en/fees/ for more details.

USPTO Certification Fee: If the international application is based on one basic application or one basic registration, the fee is $100 per class based on the total number of classes in the international application. Each class only counts once, even if that class is claimed multiple times for different Contracting Party countries within the international application. The fee is $150 per class, rather than $100 per class, when the international application is based on more than one U.S. basic application or registration. These fees are for filing the international application electronically. If the international application is filed on paper, the fees will be higher.

This is the rate being used to convert Swiss francs into U.S. dollars. This rate is obtained daily and populates the form to determine the amount due at the time of filing.

For a payment already submitted and acknowledged by WIPO, the specific payment reference number assigned to the submission.

The full name of the holder of the current account that has been opened with the International Bureau (IB).

The number assigned by WIPO to confirm receipt of payment.

Trademark Help - TEASi - Mark Section

For entry of a mark at Option #1 in the Free-Text form, the entered character(s) must appear in the USPTO accepted standard character set . From the entry made, the USPTO will create a JPG image file of the mark, required for proper processing.

If using the Pre-Populated form, the mark is automatically populated into the form and cannot be changed.

When attaching my drawing image what is the proper size of the JPG/JPEG file? All black-and-white jpg images and color jpg images must be scanned at no less than 300 dots per inch and no more than 350 dots per inch, and with a length and width of no less than 250 pixels and no more than 944 pixels, e.g., a valid pixel dimension is 640 X 480 pixels. To ensure your image file meets these requirements, you can use a free graphic viewer, e.g., Irfanview . If you cut-and-paste an image into Irfanview , or open an image file using the program, select "Image" from the tool bar and "Information" from the drop-down choices to view the current DPI and pixel dimensions. If your image is not in the proper dimension, you can use Irfanview to change the DPI and pixel dimensions: 1) Select "Image" from the tool bar; 2) Select "Resize" from the drop-down choices; 3) Set the DPI to 300 - 350 and change the pixel dimension to within the accepted range of 250 X 944; 4) If the new image file looks acceptable to you in the new dimensions, save the image file, by selecting "File" from the tool bar and using the "Save As" feature to save the file as a JPG image. If the image is not clear, do not submit the image. Instead, seek the assistance of a graphic artist to create the properly-sized jpg file.

Yes. The application for international registration can be limited to only those classes for which you want the international registration to cover. E.g., the basic application may contain 4 total classes but all designated Contracting Parties may be limited to only 3 of those classes.

If the basic application or basic registration contains a description of the mark, the international application must contain the same description of the mark. If the mark is in color, you should list the portions of the mark that are in color and the corresponding color for each, e.g., "A bird with a blue body, a red head, and a yellow beak." Do not enter any USPTO design search codes or their descriptions in the mark description field, e.g., silhouettes of men is coded 02.01.02.

To decrease the color depth in an existing JPEG image to only grayscale (and as close to pure "black-and-white" as possible), you can use a free graphic viewer, e.g., Irfanview . If you copy-and-paste an image into Irfanview , you can decrease the color depth to two colors by following these steps: 1) Select "Image" from the tool bar; 2) Select "Decrease Color Depth" from the drop-down menu; 3) Select "2 colors, black and white;" 4) Click "ok;" 5) Confirm view of image as a pure black and white image; 6) Select "File" from the tool bar and select "Save As;" 7) Select "Save as grayscale JPEG" that appears in a popup window titled "JPEG/GIF save options"; 8) Save the image as a JPEG; and 9) Attach this image to your application as your proper black-and-white mark image. If you are not able to reproduce your mark as a pure black-and-white image, you should seek the assistance of a graphic artist.

NOTE: The form will "reject" a "black-and-white" image that has colors associated with it. Black-and-white images with a color claim are acceptable, but drawings that are lined for color are not; you must submit an actual color image

The "ideal" "black-and-white" image would consist of only two colors, namely, black and white. Unfortunately, due to limitations within the existing JPEG format, that is impossible. Instead, the "best" possible image will be a grayscale image that is as close to black and white as possible. This grayscale image can be created by image editors that will save the image in 8-bit JPEG, which eliminates all color elements from the JPEG image. When scanning your image file, you should confirm that the settings on your scanner are set to create a black-and-white or grayscale JPEG, not a color image. If you submit a black-and-white or grayscale image that has colors associated with it, WIPO will reject the image and you will receive an irregularity on your application.

Transliteration: Enter the transliteration of any non-Latin characters in the mark. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. E.g., if the mark consists of the Chinese character that is pronounced "Chi," you would enter "Chi" in this field.

Where the mark consists of or contains words that can be translated, such a translation may be provided. The translation may be into English and/or French and/or Spanish, irrespective of the language of the international application. The International Bureau (IB) will not check the accuracy of any translation of the mark, nor will it question the absence of a translation or provide a translation of its own.

Parts of the mark in color: List the portions of the mark that are in color and the corresponding color for each, e.g., "A bird with a blue body, a red head, and a yellow beak." This statement need not duplicate the mark description but must identify the principal parts of the mark that are in each color.

Color(s) in the mark: List here only the actual color(s) appearing within the mark. For example, a proper entry may consist of the single word "green," or multiple colors, such as "red, blue, and yellow." No other information should be provided.

Uploaded Color Image: If you have uploaded a color image, but do not wish to proceed with that color image, you must return to the Wizard page and answer "No" to Question #1. When you return to the Mark section, your original image from the USPTO database will then be displayed.

A disclaimer is not required in the international application merely because it occurs in the basic application or is contained in the basic registration. You may enter the descriptive or generic wording found in the mark, for which no claim is being made to the exclusive right to use, apart from the mark as shown, in order to obviate a request for such a disclaimer by a designated Contracting Party.

Verbal Element: Enter the word(s) that appear within the overall composite mark (as shown in the JPG image file). E.g., if the mark consists of the design of a cat and the words THE CAT'S MEOW, you would enter in this field THE CAT'S MEOW. You would NOT enter "The design of a cat and THE CAT'S MEOW"- it is the actual image file that will show this.

Trademark Help - TEASi - Exclusions And Limitations

A limitation allows you to request protection of the mark in specifically designated Contracting Parties for less than all of the goods/services/classes that will be covered by the international registration. The applicant may request a limitation of the list of goods and/or services, which may affect some or all of the designated Contracting Parties. This does NOT remove the goods and/or services from the international application or affect their ability to be assigned in a subsequent designation. The sole effect is that the international registration does not extend a request for protection for those goods and/or services that are not identified in the limitation into the Contracting Parties identified in the application. The goods and/or services will still be examined by the International Bureau (IB), and, if accepted, published in the International Gazette as part of the international registration. They may be subsequently designated at any time after issuance of the international registration into any of the Contracting Parties.

A new international application may be filed in the future to extend protection of the excluded class, so long as the U.S. basic application or registration is maintained.

An exclusion of the goods and/or services in a class removes the class from the international application. The USPTO does not send the goods and/or services information for the excluded class to the International Bureau (IB), and no subsequent designation of this class will be possible.

A "partial limitation" is a narrowed list of goods and/or services for a particular class which are extended into some or all designated Contracting Parties in the international application. The listing of goods and/or services in a "partial limitation" is the only goods and/or services for which protection is being sought in the designated Contracting Parties.

In a "total limitation," the entire list of goods and/or services for a particular class or classes is not extended into some or all designated Contracting Parties in the international application. The class or classes will remain part of the international registration and may be subsequently designated at a later time to any Contracting Party.

Trademark Help - TEASi - Basics

Complete all fields for which information is known. Fields prefaced with an asterisk (*) are required fields for filing purposes and must be completed. Do not use your browser's "Back" or "Forward" buttons.

Instead, use the " " buttons at the bottom of each section of the form. As you navigate through the sections, each section is validated before the next section is displayed. If there are any errors, you must fix them before proceeding to the next section.

To save data already entered within a section, you must first click on "Next >" prior to using the "< Previous" button, should you wish to go back. Use the Pay/Submit button at the bottom of the Validation Page. After accessing the proper screen for payment and making the appropriate entries, you will receive a confirmation screen if your transmission was successful.

You will also receive an e-mail acknowledgement of your submission providing a summary of your filing. Please contact [email protected] within 24 hours of transmission (or by the next business day) if you do not receive this e-mail acknowledgement.

No. All of the software remains on the USPTO website.

Trademark Electronic Application Submission International (TEASi) is an e-filing system that allows for the filing of the forms required under the Madrid Protocol to the United States Patent and Trademark Office (USPTO). The Madrid Protocol is an international treaty that establishes a framework for the international registration of trademarks. It allows a trademark owner to file for registration in any of the countries (called Contracting Parties) that have joined the Madrid Protocol by filing a single application, called an “international application” or “Madrid application.” The international application is based on an application or registration in the trademark owner’s own country (a basic application or basic registration). The International Bureau (IB) of the World Property Intellectual Organization (WIPO) administers the international trademark applications under the Madrid System for the International Registration of Marks (the Madrid System). TEASi allows USPTO customers to submit electronic forms for the filing of an application for international registration, subsequent designation, request for transformation, request to note replacement, and response to a notice of irregularity issued by the International Bureau of WIPO. TEASi can be accessed through the USPTO website at http://www.uspto.gov/trademarks/teas/teasi.jsp .

To save the form, click on the “Save Form” button at the bottom of the Validation Page. The system will send you an email at the address you provided with a subject line “Application for International Registration Saved.” The message will contain a link from which you can access the saved application at a later time.

To use this form successfully, please note the following requirements:

You must use one of the following browsers: Internet Explorer 9+; FireFox 5+; Safari 5.1+; Google Chrome 13+. You can NOT use Netscape 4.x;
You must have the cookies and javascript features of your browser enabled;
Do NOT use your browser's "BACK" or "FORWARD" buttons at any time to navigate through any portion of this form. Always use the navigational tools provided specifically at the bottom of the form pages; and
If you have installed Anti-Spam filters or software on your email service, please ensure that legitimate emails from [email protected] are not falsely identified as spam or junk.

Trademark Help - TEASi - Goods/Services

Enter the goods and/or services that are identical to or narrower than the goods and/or services identified in each claimed U.S. basic application or registration. For more information about acceptable language for the goods and/or services, see the USPTO's on-line U.S. Acceptable Identification of Goods and Services Manual (ID Manual) , or WIPO's on-line Goods & Services Manager .

Trademark Help - TEASi - Contact Information

If you need help resolving technical glitches, you should e-mail [email protected] . The TEAS team is generally available Monday – Friday from 8 a.m. until 5 p.m. Eastern Time, except holidays, and will respond to your inquiry at the earliest opportunity.

For general information about the Madrid Protocol, please contact the Madrid Processing Unit at [email protected] , or (571) 272-8910. Please include your telephone number in your e-mail or voicemail so we can talk to you directly, if necessary. MPU is generally available Monday - Friday from 8:30 a.m. until 5:00 p.m. Eastern Time, except holidays, and will respond to your inquiry at the earliest opportunity.

Trademark Help - Trademark Electronic Application System (TEAS) - Basics - Technical Information - Trademark Electronic Application System (TEAS) - Other

We make every effort to have the Trademark Electronic Application System (TEAS) available 24 hours a day, seven days a week. The site is sometimes down for scheduled maintenance, for which the USPTO generally posts advance notice. We recommend that you check the current server status and planned outages page before beginning the filing process. Sometimes the site is also down unexpectedly. Although we try to restore service as soon as possible, this does not always happen as quickly as we would hope. Because of the possibility of an unforeseen problem (such as site downtime or Internet connectivity issues), we encourage you to plan ahead and not wait until the last minute to file time-sensitive forms electronically with the USPTO.

All forms filed via TEAS are time/date stamped when received on the USPTO server, according to Eastern Standard Time (EST) and EST controls for purposes of determining the timeliness of a document. Any submission that arrives as of 11:59 p.m. EST will be given that day's filing date (i.e., regardless of the USPTO's "normal" business hours).

If your deadline is today and the document cannot be filed via TEAS due to an outage, you must use an alternative method of filing to ensure that the document is timely received in the USPTO. A deadline that falls on a Saturday, Sunday or federal holiday within the District of Columbia extends the due date to the next succeeding day that is not a Saturday, Sunday, or federal holiday. 37 C.F.R. section 2.196. See TMEP section 308 .

All forms filed via TEAS are time/date stamped when received on the USPTO server, according to Eastern Standard Time (EST). The time/date stamp is applied at the moment the payment process is completed and the success screen is displayed. The time/date stamp applied by the TEAS server is the official time the USPTO received the application or form; the time the transmission began is not a factor considered when assigning the filing date. The official filing date and time can be found at the bottom of your e-mail confirmation. Any submission that arrives as of 11:59 p.m. EST will be given that day's filing date (i.e., regardless of USPTO's "normal" business hours).

TEAS allows you to save your work as a portable form at the Validation Page. This page appears at the end of the application after you have entered all your information in the form. To download and save the form data, you must click on the "Download Portable Data" button at the bottom of the Validation Page. The information will be saved to your local drive. To begin the submission process with saved data, you must open a new form, and click on the "Browse/Choose File" button displayed on the initial form wizard page, at "[OPTIONAL]" To access previously-saved data, use the "Browse/Choose File" button below to access the file from your local drive." Clicking on the "Continue" button at the bottom of the first page will then properly open the saved version of the form. Alternatively, you may create a "dummy" form and enter the "real" data at a later point. You can create a "dummy" form by (1) pulling up the regular TEAS form; (2) entering either an "x" for any mandatory field, or "fake" numbers where a numerical entry is required, or attaching a "dummy" image file; (3) validating this version of the form; (4) using the button on the bottom of the validation page to save the form to your local drive; (5) pulling up the saved form, and (6) entering "real" data for any field wherein an "x" was initially used as a "data placeholder." WARNING : If you create a "dummy" form, and the USPTO then later upgrades the form, the saved template may not be usable for future filings, and a new template based on the upgraded version of the form may have to be created.

If you "back up" on a TEAS form after validation, e.g., to correct an error, and your form is now completely blank, your system probably has a "cache" deficiency. Cache is a storage area on your browser that is used to keep track of Internet web pages. Augmenting your cache can enhance your computer system's performance, and allow you to complete TEAS forms without losing previously-entered data. To accomplish this, you should allocate at least 5-10 megabytes (approximately 5,000-10,000 KB) of your hard drive to the browser. If you have a small hard drive and cannot allocate this amount, you should allocate about 5-10% of your available hard drive capacity to your browser. Also, we recommend that you periodically totally clear your cached files.

Augmenting your Cache: To increase your cache size, follow the steps under the appropriate browser version: For Navigator 4-7x:

1. Under the Edit menu, select Preferences, double-click Advanced, and select Cache.
2. Change the disk cache to between 5,000 and 10,000 KB.

For Internet Explorer 4:

1. Under the View menu, select Internet Options and choose the General tab.
2. Under Temporary Internet Files, click Settings. Under "Amount of disk space to use," drag the slider all the way to the right and click "ok."

For Internet Explorer 5-6x:

1. Under the Tools menu, select Internet Options and choose the General tab.

Clearing your Cache: To clear your cached files, follow the steps under the appropriate browser version: For Navigator 4-7x:

2. Click the Clear Memory Cache and Clear Disc Cache buttons.
1. Under the View menu, select Options and choose the General tab.
2. In the Temporary Internet Files dialog box, click Settings/Delete Files.
2. In the Temporary Internet Files section, click Delete Cookies Delete History files.

A Blackberry can be used to sign a TEAS form (using the e-signature approach), with certain workaround steps. Do not click directly on the provided link (i.e., at, e.g., "To sign Trademark/Service Mark Application, Principal Register electronically, please CLICK HERE,"); otherwise, an error will result. Instead, you must copy the long link provided beneath the above (i.e., e.g. https://teasplus.uspto.gov/submit250/sign.service?id=USPTO/FTK-10.113.1… ). Then, go to the web browser and paste in the entire link. By way of example, here are specific instructions presented to the USPTO by a Blackberry user: 1). Go into the T-zones web browser (browser provided by this user's service provider, i.e., T-mobile); 2). Click "Track wheel" and select "Paste;" 3). Click "Track wheel" again, and select "O.K.;" 4). This should result in the signature page being displayed, wherein the signature and date can be entered.

All TEAS and TEASi forms will require customers to log in starting October 26, 2019, even if they applied before that date. This includes forms for applications in progress and registration maintenance filings.

Certain actions reset the inactivity timer and keep your session alive. Actions that count as activity include:

Changing pages within the form using the “Go Back” or ”Continue” navigation buttons at the bottom of each page.
Uploading attachments to TEAS.
Choosing “Yes, keep me signed in” on the inactivity pop-up warning.

Actions that do not count as activity include:

Typing in a text field. Please consider typing lengthy responses into a separate document first and then pasting them into the form.
Browsing the ID manual inside of TEAS and checking the boxes of identifications does not count as activity until you insert the checked entries in the form.
Clicking hyperlinks or help text links in the TEAS or TEASi form.
Checking boxes and radio buttons. Since some boxes and radio buttons behave differently than others, assume none of them count as activity.

You will be logged off after 30 minutes of inactivity. You will see a warning when there are five minutes remaining. A countdown timer will appear and you can choose “Yes, continue my session” to keep working. If you do not choose to continue your session, after five minutes you will be timed out of the form. When this happens, you will lose all the data entered in the form if you have not previously saved it by selecting the “Save” button on the validation page. If you are timed out due to inactivity, you will need to start the form again.

The TEAS e-signature process and the TEASi “send for review” process are exempt from the login requirement. Customers using the TEAS e-signature process can sign and return a document without logging in.

The Trademark Electronic Application System (TEAS) allows you to fill out online USPTO forms. You can submit the forms directly to the USPTO over the Internet and pay by credit cards, electronic funds transfer, or through an existing USPTO deposit account. TEAS can also be used to file other documents including a response to an examining attorney's Office action, a change of address, an allegation of use, and post registration maintenance documents.

Trademark Help - Trademark Electronic Application System (TEAS) - Contact Information - Technical Information - Trademark Electronic Application System (TEAS) - Other

The TEAS mailbox is monitored Monday through Friday, 8 a.m. until 8 p.m. ET, with the exception of federal holidays. A representative will respond to your request during the next scheduled business day. Please be advised that when a filing deadline falls on a Saturday, Sunday, or federal holiday, the filing may be made on the next succeeding day that is not a Saturday, Sunday, or federal holiday. 37 C.F.R. §2.196 . For immediate technical support on Saturdays and Sundays through 10 p.m. EST, please call 1-800-786-9199 (press 3).

Please be advised that if the deadline for filing your document is today, you must use an alternative method of filing to ensure that the document is timely received. Information on alternative filing and payment methods for common document types is available on the Filing Documents During an Outage page .

A reminder that you may email [email protected] for help in resolving glitches or answering technical questions. Please include the following information: (1) your name, (2) telephone number, (3) serial number and/or registration number, (4) a description of your issue, including the name of the form you are having problems with (e.g., Response to Office Action Form, Request for Extension of Time to File a Statement of Use, etc.), and (5) a screen shot of any error message that you are receiving.

If you need general trademark information, please Contact the Trademark Assistance Center .

Trademark Help - Trademark Electronic Application System (TEAS) - Drawing/Image Files

The mark image you submit with your application will be printed on your registration certificate. It is in your best interest to submit a clear, high-quality image.

Mark image requirements:

5 MB or smaller
The filename must be less than 256 characters long, including the .jpg extension. You are encouraged to use the shortest name possible. Remember to save images created on a Macintosh using Adobe Photoshop or Illustrator with the .jpg extension.
Cannot be zipped or otherwise compressed Please bear in mind that JPG files are already compressed.
The mark image cannot include the trademark, service mark or registration symbols (TM, SM,®). These symbols should only appear on your specimen. Please see TMEP section 906 for more details.
The image must contain as little white space around the design as possible.
Submit the image in black and white or grayscale if you are not claiming color as a feature of your mark.
If submitting in color, use RGB color scheme.
Adobe Photoshop/Illustrator users must not submit files in the CYMK color scheme.

Additionally, we recommend you do the following to create a high-quality image:

If possible, stay all-electronic. TEAS loads images directly to our database without the error-producing steps of printing and scanning.
Scan a high-quality original.
Scan at a high resolution.
Use your scanning software to crop, resize, and adjust the image to minimize white space.
Scan black and white or color images at 300-350 dots per inch, and with a pixel range of 250-944 pixels for both length and width. We also accept grayscale images, so you can scan your image using 8 bits per sample pixel. We consider images saved in grayscale to be black and white.

We accept image files in PDF or JPG format. Drawing files (mark images) must be submitted in JPG format, see requirements for drawing files for more information. You may submit all other image files (specimens, evidence, etc.) in either format.

JPG requirements:

JPG files must be 5MB or smaller.
The filename can be up to 256 characters long, including the ".jpg" extension. You are encouraged to use the shortest filename possible. Remember to save images created on a Macintosh using Adobe Photoshop or Illustrator with the .jpg extensions.

PDF requirements: Size

All files must be 30MB or smaller
All files must be saved at 300 DPI
Page size within the files must be set to 14 x 14 inches or smaller If any page within the entire PDF file exceeds this size limitation, the entire PDF file will be blocked from upload.
Use a valid PDF format. It is NOT sufficient that the file simply be named using a PDF extension (.pdf), because that does not by itself create a valid PDF file.
Use one of the formats below for images within the PDF file. GIF, BMP, TIFF, JPG or PNG
Use one of the fonts below. Courier (Regular, Bold, Italic, or Bold Italic), Times (Roman, Bold, Italic, or Bold Italic), Helvetica (Regular, Bold, Italic, or Bold Italic), Symbol, Zapf Dingbats. NOTE : Fonts not listed above must be embedded within the PDF document.
Fonts should be set to "subset."
Can use upper or lower case letters or numbers, periods (.), underscores(_), or hyphens (-)
No spaces Spaces are permitted in the file path, (the file's location on your computer), but never in the name of the file itself.
Must end in .pdf
Can be up to 256 characters long including the .pdf portion. Please use the shortest name possible.

Do not include

Security settings For example, self-sign security, user passwords, and/or permissions, or any other security settings that would prevent us from opening, viewing, or printing the file. All security settings must be deactivated (e.g., encryption, master passwords, and/or permissions).
Embedded scripts and/or executables For example, interactive actions or form data importation scripts
Worms, viruses or other malicious content Files with malicious content will be deleted.
Active hypertext links, or any internal/external links While you may textually reference a URL as a disabled link, it cannot be presented as an actual hyperlink.
Multimedia For example, sound, video, animations, slide shows
3-dimensional models
Multi-page objects For example, Excel spreadsheets While the overall PDF file would upload, the other internal object will be "stripped" out of the file, and will not be viewable.

Other requirements

All files must contain only a single layer. Documents with multiple layers must be flattened prior to submission, to convert all overlapping areas in a stack of transparent objects into a collection of opaque objects. Any invisible layers will be lost when processed by the USPTO.
Use Adobe version 1.3 or newer.

NOTE: If you have Adobe Acrobat Professional 6.0, for instructions on resizing PDF pages or reducing the DPI, click here ; otherwise, please forward the PDF file to [email protected] , for resizing/reduction within ONE (1) business day. Sending a file to the TEAS mailbox is NOT considered an actual "filing" for any deadline purposes.

Trademark Electronic Application System (TEAS) - Identity verification

If you’ve previously verified your identity in order to access the patent filing systems, Patent Center, then you do not need to verify your identity again to access TEAS or TEASi. Some verified patent customers may need to take a quick additional step and select a filing role to gain access to TEAS and TEASi, but most will automatically gain access. Patent customers who are currently sponsored as Proofed Practitioner Support will need to be separately sponsored as Attorney Support Staff in the trademark system by a verified attorney using the Trademark sponsorship tool before they can access TEAS and TEASi.

A USPTO.gov account is required to access TEAS and TEASi. When you create a USPTO.gov account , you provide your name and primary email address. After verification, the name field is locked and your account is authorized. This helps the USPTO ensure that a person using the trademark system to enter information or make changes is authorized to do so.

For security purposes, each individual person may only have one verified account used to access trademark filing systems. You may create additional USPTO.gov accounts for other functions that don’t require identity verification, such as making payments.

No. Account sharing is not permitted under the Terms of Use for USPTO websites. However, if you’re an attorney and need legal support staff to work on your behalf, you may sponsor them using the Trademark sponsorship tool.

No. Each USPTO.gov account must correspond to a single person. Company accounts are not currently allowed, and will continue to be disallowed for identity verification purposes. You won’t be able to verify an account that has a company, firm, or other entity name in the account holder name fields.

No. The name on your account does not need to exactly match the name that you use when filing, as long as both names are truthful and meet our other signature requirements. We understand that many people experience issues updating their records after a name change. We also understand that many people use nicknames, middle names, or other names professionally. However, if the name on a filing doesn’t seem to identify the same person named in the account, we may inquire about it.

If you already verified your account under a previous name and now need to change it, you must request a name change using the paper verification form option . We currently don’t have an electronic option for verified name changes, but we’re evaluating that possibility for the future. Any name change will need to be supported by official documentation.

No. The name and postal address in your account is used only for validation purposes. It will not automatically appear on any form or on any filing that is available to the public. The information that appears publicly is the information that you submit in the TEAS or TEASi form.

Trademark Help - Trademark Electronic Application System (TEAS) - Payment, Fees, and Refunds

The filing fee depends on the application filing option you select. The TEAS Plus filing option is $250 per class of goods or services, but has the strictest requirements. Detailed information on the TEAS Plus requirements can be found at TMEP §819.01 . The TEAS Standard filing option is $350 per class of goods or services for applications electronically filed that do not meet the additional TEAS Plus requirements.

NOTE: If you submit a TEAS Plus application but do not satisfy those application filing requirements, you will be required to submit an additional processing fee of $100 per class of goods or services, and the application will then be handled as a TEAS Standard application.

While an application may only have one mark, it may cover multiple classes and a filing fee must be paid for each class. For example, a TEAS Plus application for a mark applied to both computer software in Class 9 and t-shirts in Class 25 would have two classes, making the filing fee $500.00 ($250 for each class). WARNING: The filing fee is a processing fee for the application. This fee is not returned even if ultimately the USPTO does not issue a registration. You should take all necessary steps to ensure the mark is registrable before filing the application.

Although only one mark is permissible per application, a mark may consist of several elements that are joined to form a composite whole; e.g., words plus a design. You do not need to have already used your mark before filing an application. However, if the mark has not already been used in interstate commerce at the time of filing, and the application is instead based on an "intent-to-use" the mark in interstate commerce in the future, an additional fee of $100.00 per class will be required when the "Allegation of Use" form is submitted (whereas a "use-based" application does not require this additional fee).

Please see the Reduced Fee FAQs page for more information about application filing fees and the Trademark Fee Information page for information on payment options and a listing of other trademark fees.

Trademark Help - Trademark Electronic Application System (TEAS) - Miscellaneous Issues - Technical Information - Trademark Electronic Application System (TEAS) - Other

You will want to make sure that all USPTO emails reach you. Unfortunately, servers or SPAM filters often block important messages or send them to your junk folder because they don't recognize the sender. Please note that the USPTO cannot deliver an email successfully if: 1) The destination email address is not valid. Please check that the entered e-mail address does not contain any typographical errors. 2) The destination email address is relaying the email to a different address. 3) The USPTO cannot perform a "reverse DNS look-up" of the destination email address. 4) The destination e-mail server is blocking any email address that ends with "uspto.gov" as spam. NOTE: Email originating from "uspto.gov" may include attachments, so email from the USPTO address with attachments should not be blocked.

To help ensure that you receive mail from the USPTO, please log in to your email now and follow the listed steps to add important USPTO email addresses to your address book, contacts, and/ or "Safe Senders" list.

Remember that you may receive email messages from several Trademark addresses. Please add all of the addresses listed below. You may also receive email from an individual person's USPTO email address, e.g., [email protected] .

[email protected]

[email protected] through [email protected]

[email protected]

Simply cutting and pasting a Word or Word Perfect document into a TEAS form may cause the introduction of unwanted characters in the form and/or prevent successful validation of the form. This is especially true for heavily formatted documents. To avoid this problem, you should convert the Word or Word Perfect document to a text format. Do this using the "save as" and "save as type" features of Word or Word Perfect. There is not a problem with text that is typed directly into the form or text that was previously saved as an HTML document. If the form you are trying to use allows you to attach images as evidence, you could create JPG image(s) of heavily formatted documents and attach them to the form. A text document does not allow for complex formatting.

Paralegals and legal staff don't need a sponsored account to access TEAS or TEASi at this time. We are planning future updates to the TEAS and TEASi filing system, including allowing customers to restrict or delegate access to an application or registration.

Trademark Help - Trademark Electronic Application System (TEAS) - Signature Issues - Technical Information - Trademark Electronic Application System (TEAS) - Other

The USPTO has tried to make signing an electronic form submitted through TEAS as easy as possible. The electronic forms have three signature options.

1. SIGN DIRECTLY : The individual completing the application may, if he or she so chooses, sign directly at the end of the application form. The application will not be "signed" in the sense of a traditional paper document. To verify the contents of the application, the signatory will enter any alpha/numeric character(s) or combination thereof of his or her choosing in the signature block on the application form, preceded and followed by the forward slash (/) symbol. The USPTO does not determine or pre-approve what the entry should be, but simply presumes that this specific entry has been adopted to serve the function of the signature. Most signatories simply enter their names between the two forward slashes, although acceptable "signatures" could include /john doe/; /jd/; or /123-4567/.

Note : The appropriate person (i.e., (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) a U.S.-licensed attorney who has an actual or implied written or verbal power of attorney from the applicant) must personally sign the form by keying in the combination of characters preceded and followed by the forward slash symbol (/) that the signatory has adopted as his or her "signature." Someone else on behalf of the proper signatory should not key this in.

2. E-MAIL TEXT FORM TO SECOND PARTY FOR SIGNATURE : Through this method, the "text form" may be e-mailed to the proper signatory as a "hyperlink" (no "downloading" of a portable form is required). The signatory will enter the signature between two forward slashes (e.g., /john smith/). The signed form is then returned to the original preparer, who can then complete the submission process to the USPTO.

To use this approach select the "E-mail Text Form to second party for signature" method in the Signature Information section. Enter the signatory's name, position, and phone number and click "Validate." At the Validation page, click the link for "Text Form for E-Signature." Next, click the link for "Send this Text Form to the authorized signatory(ies) to request e-signature(s)." The requestor should enter his/her name and e-mail address and click "Send Email."

TEAS will send the e-signature request directly back to the requestor, and then the requestor must forward the resulting e-mail to the intended signatory. With this approach, the requestor will receive any possible "undeliverable" notice, and as such, immediately be aware when a problem exists with the signatory's e-mail that requires possible correction and re-sending. All "reply" communications will be directly between the signatory and the requestor.

To sign the form, the intended signatory must click the link in the e-mail and enter the signature between two forward slashes. After completing all the mandatory fields, the requestor must click the "Sign" button to return the signed form to the originator of the request. The requestor will receive an e-mail with a "Submit" link, to allow access to the Validation page wherein the final steps of the process are completed.

Note: The form must be signed and the filing to the USPTO completed within 14 days. The clock starts running as soon as the requestor clicks "Send this Text Form to the authorized signatory(ies) to request e-signature(s)" and it is not based on when the requestor then forwards the e-mail to the intended signatory. Please also note that the period is calculated to the minute, and is not based on the "end of the day" for the 14th day (e.g., a request originated at 2:00 p.m. must be filed no later than 2:00 p.m. 14 days later. If the final submit button is clicked at 2:01 p.m., an error message will be displayed indicating that the time period for filing has expired and the entire process must then be started from the beginning). You can, however, download and save the portable form (available from the Validation Page) indefinitely.

3. HANDWRITTEN ("PEN-AND-INK") SIGNATURE : Through this method, the "text form" may be printed out and then mailed or faxed to the signatory, who will sign the form in the traditional "pen-and-ink" manner. Once the signed form has been mailed or faxed back to the preparer, this signed declaration must be scanned and re-attached as a JPG image file (the only image formats acceptable) to the original electronic application; the complete application can then be validated and filed electronically. Note : Under this option, the original application must be saved using the Download Portable form button on the Validation Page.

Trademark Help - Trademark Electronic Application System (TEAS) - Non-Traditional Marks - Technical Information - Trademark Electronic Application System (TEAS) - Other

Yes. The file must be in an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5 MB in size for audio files and 30 MB for video files because TEAS cannot accommodate larger files. The applicant should submit an audio reproduction of any sound mark or video reproduction of any motion mark. The purpose of this reproduction is to supplement and clarify the description of the mark. The reproduction should contain only the mark itself; it is not meant to be a specimen.

Technical Information - Trademark Electronic Application System (TEAS) - Other - Trademark Help - Trademark Electronic Application System (TEAS) - Basics

Failure to satisfy the specific USPTO requirements for any PDF attachment may result in the TEAS form not validating. For the USPTO to accept any PDF attachments, the PDF file must satisfy the following:

be a valid PDF format. It is not sufficient that the file simply be named using a PDF extension (.pdf), because that does not by itself create a valid PDF file.
be version 1.3 or newer.
have an overall size under 30 MB . While no page limit exists, each PDF file cannot exceed 30 MB .
Not contain security settings (e.g., self-sign security, user passwords, and/or permissions) that would prevent the USPTO from opening, viewing, or printing the file. All security settings must be deactivated (e.g., encryption, master passwords, and/or permissions) prior to upload to TEAS.
Not contain any embedded scripts and/or executables, including sound or movie (multimedia) objects, prior to upload to TEAS.
Not contain any multimedia (e.g., sound, video, animations, slide shows); 3-dimensional models; or multi-page objects (e.g., Excel spreadsheets), prior to upload to TEAS. While the overall PDF file would upload, the other internal object will be "stripped" out of the file, and will not be viewable.
be named properly. The file name can consist of any upper or lower case letters or numbers, but must end in .pdf. It can also include the following: _ , -, and . [excluding the commas shown here]. No spaces are allowed in the actual PDF file name, but spaces are permitted in the file path. The name can be up to 256 characters long, including the .pdf portion; however, you are encouraged to use the shortest name possible. [NOTE: Similarly, for JPG files, while the name can be up to 256 characters, including the .jpg portion, you should use the shortest name possible, as that helps ensure a successful upload to TEAS].
use one of the following formats for any images within the PDF file: GIF, BMP, TIFF, JPG and/or PNG. No other image formats are supported. However, the image may include black-and-white, color, and/or grayscale.
Courier (Regular, Bold, Italic, or Bold Italic)
Times (Roman, Bold, Italic, or Bold Italic)
Helvetica (Regular, Bold, Italic, or Bold Italic)
Zapf Dingbats

NOTE: Fonts not listed above must be embedded within the PDF document, and the fonts listed above should be embedded. In addition, all fonts should be set to "subset."

be free of worms, viruses or other malicious content. Files with malicious content will be deleted.
be "single layer." Documents with multiple layers must be flattened prior to submission, to convert all overlapping areas in a stack of transparent objects into a collection of opaque objects. Any invisible layers will be lost when processed by the USPTO.
NOT contain any active hypertext links, or any internal/external links. While you may textually reference a URL as a disabled link, it cannot be presented as an actual hyperlink.
be saved at 300 DPI.
be no larger than 14 x 14 inches. If any page within the entire PDF file exceeds this size limitation, the entire PDF file will be blocked from upload.

NOTE: If you need assistance resizing PDF pages or reducing the DPI, please forward the PDF file to [email protected] , for resizing/reduction within one (1) business day.

The USPTO forms use pop-up windows to display critical information. To use this site properly, you must disable any existing pop-up filters (through either anti-virus software or a pop-up killer program).

To use a TEAS form, each and every time you should (1) double-click on the browser icon on your desktop; (2) proceed to the TEAS site; and (3) click on the link for the desired form. Although you can open more than one form at a time through these steps, you should process ONE form at a time, and close the browser after completing the form. This will ensure a "unique" server session for each TEAS form to be processed. If you already have a TEAS form open on your desktop, never open another form via your browser's "File New Window" option. Also, do not open a new form through a link or bookmark while you have another form open. Failure to follow the steps outlined above may result in improper data displaying within the form. Also, the TEAS forms work best when they are accessed directly via a web browser. Do not attempt to access the forms via a browser embedded in another program. For instance, do not attempt to access the forms from within your Outlook or Lotus Notes web browser feature. Accessing the forms in this manner may disable some of the forms' features. You should always open your browser (Internet Explorer, Netscape, Firefox, Safari, etc.) directly and then use the TEAS forms.

A registration is subject to cancellation for fraudulent statements . Therefore, you must ensure that all statements made in filings to the USPTO are accurate, as any inaccuracies may result in the cancellation of a trademark registration. For example, the lack of a bona fide intention to use the mark with all goods and/or services listed in an application or the lack of actual use on all goods and/or services for which you claimed use in an application or post-registration filing could jeopardize the validity of the registration, resulting in its cancellation.

Technical Information - Trademark Electronic Application System (TEAS) - Other - Trademark Help - Trademark Electronic Application System (TEAS) - Non-Traditional Marks

Yes. A new application for a sound mark can be submitted directly through TEAS. The mark file must be a WAV, WMV, WMA, or MP3 and should not exceed 5 MB in size for the audio files. Please use the below instructions to attach a sound mark file and to enter a description of the sound in the file.

At the "Mark Information" page in the new application form, use the radio button to select "Sound Mark."
Click on the "Browse" button to upload your file.
Navigate to the folder with the sound mark file.
Select the sound file and click on the "Upload File" button.
Verify the upload of the file by click on the "Sound/motion Mark" link.
Enter a description of the sound in the text box.

Yes, all TEAS forms currently accept this type of file attachment. The file must be in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5 MB in size for audio files and 30 MB for video files because TEAS cannot accommodate larger files. If you have questions, please email [email protected] (link sends e-mail) .

Technical Information - Trademark Electronic Application System (TEAS) - Other - Trademark Help - Trademark Electronic Application System (TEAS) - Templates

Because of significant modifications to the underlying structure of the basic application, the USPTO no longer offers a blank version of the basic application form to create standard templates containing repetitive information. However, a "workaround" option still exists for creating a "template" for doing multiple filings: simply create a "dummy" form by (1) pulling up the regular TEAS form; (2) entering either an "x" for any mandatory field, or "fake" numbers where a numerical entry is required, or attaching a "dummy" image file; (3) validating this version of the form; (4) using the button on the bottom of the validation page to save the form to your local drive; (5) pulling up the saved form, and (6) entering "real" data for any field wherein an "x" was initially used as a "data placeholder." WARNING: If you create a template, and the USPTO then later upgrades the form, the saved template may not be usable for future filings, and a new template based on the upgraded version of the form may have to be created.

Technical Information - Trademark Electronic Application System (TEAS) - Other - Trademark Help - Trademark Electronic Application System (TEAS) - Miscellaneous Issues

If during the payment process for your filing you are bounced to the front page of the form or encounter an "SSL Certificate Error," you should try a browser other than IE. Or, if limited to IE, please simply try the next available browser version (for example, IE7.0 and IE8.0 are currently available for download). Or, if necessary, please review the information available at SSL Certificate Troubleshooting . This problem is not one that relates to the USPTO end, and cannot be resolved from the USPTO side.

For help in resolving technical glitches with the Trademark Electronic Application System (TEAS), please e-mail [email protected] . Please include the following information: (1) your name, (2) telephone number, (3) serial number and/or registration number, (4) a description of your issue, including the name of the form you are having problems with (e.g., Response to Office Action Form, Request for Extension of Time to File a Statement of Use, etc.), and (5) a screen shot of any error message that you are receiving. You should receive a response within 2 hours if the e-mail is submitted during normal business hours. For additional information, see the TEAS Help Desk .

The TEAS form scans the image file you attach in various regions to determine if it is a color or black-and-white image. If there is too much white space around the design, the form cannot find the color and views the image as black and white. To fix the problem, please crop the excess white space from the image. You can also re-size the image with a graphic view, e.g., Irfanview . All images should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, and within the pixel range suggested by the USPTO, namely, a length and width of no less than 250 pixels and no more than 944 pixels; e.g., a valid pixel dimension is 640 x 480 pixels. If your cropped image is not clear, do not submit the image because it may not meet the filing-date requirement for a clear drawing. Instead, you may wish to seek the assistance of a graphic artist to create the properly sized .jpg file.

Technical Information - Trademark Electronic Application System (TEAS) - Other - Trademark Help - Trademark Electronic Application System (TEAS) - Payment, Fees, and Refunds

Three options ( credit card , automated deposit account , and Electronic Funds Transfer will appear after clicking on the PAY/SUBMIT button, which is available on the bottom of the Validation Page after completing and validating the application form. You will not specify a payment option in the Form Wizard or within the form itself.

Technical Information - Trademark Electronic Application System (TEAS) - Trademark Help - Trademark Electronic Application System (TEAS) - Non-Traditional Marks - Other

If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also submit a detailed written description of the mark. 37 C.F.R. §2.52(b)(3). Motion/multi-media marks themselves may not be submitted as a mark showing the actual motion. While this is acceptable as a "specimen," it is not permitted as a mark.

Trademark Help - Trademark Official Gazette - Other

If you need additional assistance with viewing the TMOG, please e-mail [email protected] . Please include your telephone number, serial number, and a description of your issue. You should receive a response within 24 hours if the e-mail is submitted during normal business hours. For general information, contact the Trademark Assistance Center at 1-800-786-9199 (press 1).

Once the USPTO publishes a trademark in the TMOG, any party who believes he or she will be damaged by the registration of the trademark has 30 days either to: (1) file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB); or (2) request an extension of time to file a notice of opposition.

You must pay a fee of $400 for each class of goods or services that you oppose when filing a notice of opposition electronically through the TTAB electronic system ESTTA and $500 if filing on paper. An opposition submitted without the required fee will not be accepted. There is no fee for requesting an extension of time to file a notice of opposition.

The TTAB requests that all TTAB submissions be made online using ESTTA at http://estta.uspto.gov/ .

If you need more information on filing a notice of opposition, contact the TTAB Customer Service at 571-272-8500 or toll-free at 1-800-786-9199 (press 1), or refer to the online information at http://www.uspto.gov/trademarks/process/appeal/index.jsp .

All requests to correct or amend the application after publication but before issuance of a Notice of Allowance or registration must be filed by submitting a post-publication amendment . A paralegal specialist in the Office of the Deputy Commissioner for Trademark Examination Policy will consider the proposed amendment. If the amendment is approved, it will be entered. If the amendment may not be approved, the applicant will be advised in writing that the applicant must petition the Director to restore jurisdiction to the examining attorney to consider the amendment. If the petition is granted, the amendment will be forwarded to the examining attorney. For further information, email [email protected] .

If the e-mail link in the "Trademark Official Gazette Publication Confirmation" does not work correctly you can search the TMOG by issue date and serial number to locate your mark. The serial number and issue date are both in the TRADEMARK OFFICIAL GAZETTE PUBLICATION CONFIRMATION e-mail notice.

Direct your browser to this URL - https://tmog.uspto.gov/ then select the correct issue date from ISSUES under the FILTERS on the left hand side of the window. Check the box corresponding to the issue you need. Then type or copy the serial number into the SEARCH BY text box and click the magnifying glass icon to execute the search. Please note that by default the filter settings select the most current issue and marks publishing for opposition, so if you need an older issue you have to select it.

TMOG notices, such as changes in rules or Office procedures and notices to parties who cannot be reached by mail, are available at http://www.uspto.gov/trademark/trademark-updates-and-announcements/trademark-official-gazette-notices .

View the instructions at https://storage.googleapis.com/tmogdocs/TMOG_Search.pdf /.

View the instructions at http://www.uspto.gov/trademarks/resources/Searching_PDF_OG.jsp .

You can locate the date that the mark was published for opposition by entering the serial number in http://tsdr.uspto.gov/ and clicking “Status.” The information will appear under the “Prosecution History” tab as the date that the mark “Published for Opposition.”

Yes. If the submitted drawing of your mark contains color, the TMOG PDF file will show the mark in color.

Yes. Marks that are found to be registrable on the Supplemental Register are printed in theTMOG on the date that they register. Marks registered on the Supplemental Register cannot be opposed, but are subject to cancellation under 15 U.S.C. §1064. 15 U.S.C. §1094.

The Trademark Official Gazette (TMOG) is published every Tuesday, including federal holidays. The purpose of the TMOG is to give notice of certain actions that are being taken with respect to the marks listed in the TMOG on the particular date of issue. Publication in the TMOG starts the period for opposition for some of the marks listed in the TMOG.

The TMOG contains a depiction of the mark, the identification of goods and/or services, and owner information for: (1) marks published for opposition that are expected to register on the Principal Register; (2) marks registered on the Principal Register under 15 U.S.C. §1051(d) on the date of the particular TMOG issue in which the marks appear; (3) marks registered on the Supplemental Register on the date of the particular TMOG issue in which the marks appear; and (4) updated registration certificates. The TMOG also contains a list, by International Class, of the registrations issued on the Principal Register on the date of the particular TMOG issue and an index of registrants appearing in that issue.

The TMOG is offered in an easily searchable web-based format . In addition, the USPTO will continue for a certain period to offer a PDF version of the TMOG.

The best version of Adobe Reader to use is a recent version that Adobe supports. ‚ The current PDF files are backward compatible to version 5, but using a currently supported version is strongly advised since Adobe will not supply security patches for older, unsupported versions of reader and that leaves the user vulnerable to attacks against the PDF viewer.

We recommend downloading the PDF file directly to your local hard drive to circumvent any configuration issues between the browser and the PDF reader add-on/plug-in. Most browsers do not natively support PDF files and require either an Adobe PDF viewer or a third-party PDF viewer to display a PDF file. After saving to a disk or your desktop, you should be able to view the file by clicking on it. If so, then this suggests the problem is the browser, the plug-in/add-on (different names for the same thing), or a configuration issue between the browser and the plug-in/add-on viewer.

Yes. Choose "File" and then "Print" from the menu options and change the settings to print a single page.

You can download a file and save it to your desktop. To download a file, right-click on the link, select "Save Link As..."

You can search for a trademark in the online version of the TMOG available at http://www.uspto.gov/news/og/tindex.jsp . "You can search the PDF file by any literal element of the mark, the owner's name, the serial number, or the registration number. To search for a trademark in the TMOG:

Locate the date that the mark was published for opposition by entering the serial number in http://tsdr.uspto.gov/ and clicking "Status."

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Proceedings

You can file an appeal to the TTAB. You must file the appeal within the time provided in 37 C.F.R. § 2.62(a) from the date of the final refusal to register. For more information, see TBMP Chapter 1200.

Yes, the filing of a letter of protest, whether before or after publication of the mark, does not stay the time for filing an opposition or an extension of time to oppose the subject mark. If a party files a letter of protest before publication but the subject mark still publishes for opposition, then the party must timely file a request for extension of time to oppose, if it wishes to preserve its right to oppose. Similarly, if a party that files a letter of protest after publication wishes to preserve its right to oppose, it too must file a timely request for an extension of time to oppose. Regardless of when the letter of protest was filed, if the subject mark has published for opposition, the party may choose to file a notice of opposition instead of a request for extension of time to oppose and request that the opposition be suspended pending a determination of the letter of protest. See TBMP § 215. Note: a Letter of Protest is considered good cause for the first 90-day request to extend time to file an opposition, but does not constitute extraordinary circumstance to grant the final 60-day request to extend time. Potential opposer will have to secure the consent of the applicant or file a notice of opposition within the time set.

Unfortunately, you have missed your opportunity to file an opposition. Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. You may file a petition to cancel, after the trademark registers. It takes about three months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It may take much longer for an Intent to Use case to mature to registration. Check the Trademark Status & Document Retrieval database " TSDR " to see if it has registered.

No. Before an opposition is filed, including the extensions of time period, an amendment or an express abandonment should be filed with the Trademark Office, and can electronically be filed through the Trademark Electronic Application System " TEAS ".

An opposition is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he can file an opposition. For more information, see TBMP § 102.02.

A cancellation is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. For more information, see TBMP § 102.02.

To get an extension of time, you must file a motion. Your motion may be contested. If it is not contested, it will be granted as conceded. If the motion is contested it may be denied, so you may wish to get the consent of the other side and file the motion with their consent. See TBMP § 509.

You must file a motion to the TTAB asking that the TTAB accept a late-filed answer. In your motion, you must to set forth the reasons why the filing is late. The TTAB will consider whether you have shown good cause to set aside the default. Do not forget to serve a copy on the other side, including a certificate of service, see TBMP § 113. You may also want to confirm that your mailing address is correct.

Your answer will be due on the next business day. See TBMP § 112.

No, written disclosures or disclosed documents, requests for discovery, and materials or depositions obtained through the discovery process should not be filed with the Board except when submitted with a motion relating to disclosure or discovery, or in support of or response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.

If any party wishes to have a TTAB professional participate in the required discovery conference, the party must either call the TTAB attorney assigned to the case or file a request through ESTTA . Such request should be made no later than 10 days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. Filing a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a TTAB attorney. See TBMP § 401.01.

You must file a document stating what you wish to do. However, once an answer is filed, if you want the matter dismissed without prejudice, you will need to obtain the written consent of the other side; and, of course, you need to serve the other party to the proceeding with a copy of anything you file. If you do not obtain written consent, the proceeding will be dismissed with prejudice.

If a proceeding has been commenced and is still pending at the TTAB, you or your counsel must file the amendment with the TTAB. The Examining Attorney does not have jurisdiction over the case while a proceeding is pending at the TTAB. The TTAB will consider the amendment and, if appropriate, enter it into the application file. See TBMP § 514. However, if an opposition is not yet pending, and the application is only under threat of an opposition because of the filing of an extension of time to oppose, you or your attorney may file a post publication amendment. If you wish to file such an amendment, you may do so by using the post publication amendment form available on-line via the Trademark Electronic Application System " TEAS ". In the latter circumstance, you and the potential opposer should note that the Board will not suspend the running of the extended opposition period to accommodate processing of the post publication amendment.

Yes. See 15 U.S.C. § 1058 and TMEP § 1604.

No. See 15 U.S.C. § 1065 and TMEP § 1605.

No. In order to introduce USPTO records into evidence you must follow the correct procedure. For more information please see TBMP Chapter 700 on Trial Procedure and the Introduction of Evidence.

There are several organizations you can contact regarding ADR .

When no answer has been filed, all other deadlines are tolled. If the parties have continued to litigate after an answer is late‑filed, it will generally be viewed as a waiver of the technical default.

No. After the close of the time period for filing a Notice of Opposition, the notice may not be amended to add a joint opposer. However, assignees and successors may be joined or substituted during a proceeding, even when they are "joined," they are not considered joint opposers.

Motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures for the first testimony period.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Filing

All submissions must be filed electronically through the TTAB’s electronic filing system ESTTA . Please keep your ESTTA tracking number as it may be needed to retrieve submissions that do not display correctly or fix submissions that display incorrectly.

ESTTA works only if you use Microsoft Internet Explorer 9, Internet Explorer 11 and Google Chrome Version 43, on PC architecture. While every effort has been made to use standard programming, the USPTO cannot guarantee that ESTTA will function properly using browsers or operating systems other than those identified here. NOTE: Internet Explorer on the Macintosh platform will NOT permit a proper image attachment.

The ESTTA User Manual provides detailed instructions. General information is also available on the ESTTA Welcome page .

If ESTTA is down and you have time left to wait, wait for ESTTA to come back online and file online. If not, for extensions of time to file an opposition, a notice of opposition, petition to cancel or answer, file the submission in paper along with a petition to the director, pursuant to 37 CFR 2.146, to request paper filing, and the fees to cover the paper pleading or extension of time, and the petition. To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page, then scroll to Trademark Processing Fees 6401/7401. The petition to the director must be based on technical problems with ESTTA or extraordinary circumstances. Include an affidavit or declaration and any other available evidence to support your assertion, e.g., screen print showing ESTTA problem. For all other submissions (e.g., response to a motion) file with the TTAB in paper and include a written explanation as to why you could not file online. The explanation must be based on technical problems with ESTTA or extraordinary circumstances.

For the paper filing you may use the certificate of mailing process and put the filing in a USPS mailbox and the submission will be considered as being timely filed if it is mailed prior to expiration for the set time period.

Use ESTTA and select the “Consent Motions (opposition or cancellation)” option under the “ File Documents in a Board Proceeding ” option and choose the appropriate form.

Use ESTTA and select the “Opposition, Cancellation, or Concurrent Use (General Filings)” option under the “ File Documents in a Board Proceeding ” form. Be sure to serve the motion on the other side, and include a certificate of service, see TBMP § 113.

In general, no. If you accidentally filed confidential material through ESTTA without flagging it as confidential, we can change the status of the item so that it cannot be viewed publicly. You will usually be required to submit a public, redacted version of the item so it can be viewed in the electronic file.

Contact an Information Specialist at 571-272-8500 and provide the ESTTA tracking number shown on your filing receipt. TTAB staff will track it down and call you back with the information.

Contact an Information Specialist at 571-272-8500 and provide the ESTTA tracking number shown on your filing receipt. TTAB staff should be able to retrieve the document.

There is no ESTTA form for this type of a filing. File your combined pleading through ESTTA first as a notice of opposition under the application serial number(s) that you wish to oppose. Then file a separate petition to cancel the registration(s) you wish to cancel and include a motion to consolidate.

The better practice is to send in as separate papers in the same envelope with separate checks for the petition and filing fees. If you are able to file the petition to the director through TEAS include a note in the paper filing that you filed the petition to the director through TEAS . To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page , then scroll to Trademark Processing Fees 6401/7401.

If a defendant's email address is of record and authorized for communication, the notice will go out immediately, but you should check online after a couple of hours because sometimes there is a delay in the electronic processing. If we do not have an authorized email for the defendant, the notice of institution will be processed by a paralegal and may take a few days, depending on the workload.

The TTAB does not accept testimony or other exhibits in CD or DVD format. However, the TTAB has limited exceptions for multimedia exhibits, for example, if an exhibit is a commercial on a DVD, it may be submitted by mail addressed to the United States Patent and Trademark Office, Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451. Please include the proceeding number, the testimony under which it is submitted and any other appropriate identifying information.

Every paper filed in an opposition, cancellation, concurrent use or interference case must be served by email on the other party or parties to the proceeding. This means a copy of the filing must be emailed to the other party. Proof of service must be attached to the paper you file with the TTAB. This is a statement signed by the attorney or other authorized representative, stating the date of service and the manner in which service was made. Parties may stipulate to another form of service (e.g., another form of electronic service or by mail). In addition, if email service is not possible and the parties have not stipulated to another form of service, a party may choose from six options and explain why service could not be made via email. See TBMP § 113 for a complete explanation of service requirements.

The certificate of mailing procedure applies only to submissions filed in paper form via U.S. mail. It allows that, except in certain instances, correspondence required to be filed by a certain date will be considered as timely filed, even though it was not received by the TTAB until after the expiration of the set period. See TBMP § 111 for a complete explanation of the certificate of mailing procedure.

No. Pleadings, motions, briefs, depositions, testimony, etc. are all required to be submitted electronically via ESTTA . Video depositions or testimony are specifically not allowed. However, media evidence that cannot be submitted any other way (such as a movie, television show, or radio commercial), may be submitted on an appropriate medium such as DVD.

PLAN AHEAD. Because unexpected problems can occur, you should keep filing deadlines in mind and allow plenty of time to resolve any issue which might arise. The TTAB will provide general assistance to ESTTA filers, but we cannot guarantee that any problem will be resolved prior to a deadline. ESTTA filing is mandatory for all submissions. If prior to a deadline ESTTA is unavailable due to technical problems or extraordinary circumstances are present, submissions (except for extensions of time to oppose or notices of opposition to a Madrid Protocol application) may be filed in paper form. A Petition to the Director with the required showing and fee must accompany a paper-filed extension of time to oppose, notice of opposition, petition to cancel or answer. All other paper filings must be accompanied by a written explanation of such technical problems or extraordinary circumstances. Please note, if the required showing is not met the paper may not be considered. In addition, paper filings may have higher fees. To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page, then scroll to Trademark Processing Fees 6401/7401. Extensions of time to oppose and notices of opposition to Madrid Protocol applications, must be filed through ESTTA without exception.

Currently, this field is for viewing only. Please use the General Filings change of correspondence address form under "File Documents in a Board Proceeding" and the assigned Paralegal will process the change of address in due course.

These are determined on a case by case basis.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Pro Se

While you can represent yourself in a TTAB proceeding, you might wish to consider hiring an attorney to represent you. An opposition or cancellation proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel.

No, the TTAB cannot recommend an attorney to you. However, t he TTAB Pro Bono Clearinghouse Program recognizes organizations that coordinate free legal services to members of the public in proceedings before the TTAB, and who might not otherwise have affordable access to legal assistance (such as financially under-resourced individuals, small-to-medium-enterprises, and not-for-profit and nonprofit or charitable organizations with low operating budgets.) Currently, the International Trademark Association (INTA) Pro Bono Clearinghouse is recognized by TTAB. Also visit USPTO's Inventor and entrepreneur resources webpage to locate resources by state.

No. The TTAB is the administrative body that decides ex-parte appeals, oppositions, cancellations and concurrent use proceedings. For this reason, we must remain impartial. We can offer general factual information about TTAB procedure, but no TTAB employee may advise you on your case. We cannot discuss how the rules and law apply to your individual circumstances, cannot recommend a course of legal action, and cannot comment on how your case may be decided.

You can refer to the TTAB's Manual of Procedure "TBMP" . The TTAB also follows the Federal Rules of Civil Procedure.

First, you will need to file an answer within the time stated in the order you received from the TTAB. In your answer, for each numbered paragraph you see in the notice of opposition, you should indicate the number and then admit or deny the statement, or state that you are without enough information to admit or deny the statements made in these numbered paragraphs. It is possible that you may have certain defenses that should be stated as well, but we cannot give you any advice on those, which is why we recommend that you obtain the advice of an attorney. It may be helpful for you to read the TTAB Manual of Procedure "TBMP" .

An inter partes proceeding before the Board is similar to a civil action (trial) in a federal district court. The parties file pleadings, a range of possible motions, discovery (a party’s use of discovery depositions, interrogatories, requests for production of documents and things, and requests for admission to ascertain the facts underlying its adversary’s case), a trial period, and briefs, followed by a decision on the merits of the proceeding. You can review the Board’s manual of procedure, the TBMP , for more information.

You can check the electronic file in TTABVUE . You can also call the TTAB Information Specialists at 571-272-8500 to request information on the status of your case.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Rule Changes

All of the rule changes came into effect on Jan. 14, 2017 and are applicable to all proceedings including those pending on Jan. 14, 2017.

Yes. The effective date has been set a few months after publication of the rules in order to allow parties time to adjust their docketing schedules.

Yes. The effective date was set a few months after publication of the rules on Oct. 7, 2016 in order to allow parties time to adjust their docketing schedules.

Yes, even though the pretrial disclosure was served before the effective date of the new rules you may present the testimony of those disclosed witnesses by affidavit or declaration if your trial period is open on or after Jan. 14, 2017.

No. The Board will issue a notice of institution and serve the complaint on the defendant in the form of a web link or web address to access the complaint and proceeding on TTABVUE.

The duty to supplement under Fed. R. Civ. P. 26(e) continues after close of discovery.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Fees

Depending on the type of proceeding, fees vary. To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page, then scroll to Trademark Processing Fees 6401/7401. Please note effective Jan. 14, 2017 certain extensions of time to file an opposition require fees.

You may pay your fee by check or money order (payable to "Director of the U.S. Patent and Trademark Office"), credit card, deposit account, or by electronic funds transfer (EFT). Most fees can be paid online over the USPTO website. For details on each of these payment methods visit the USPTO Fees page .

The better practice is to send in separate checks. To see a complete list of TTAB Fees, select the current Fee Schedule from the USPTO Fees page, then scroll to Trademark Processing Fees 6401/7401.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - Status Information

You can check the electronic file in TTABVUE . You can also call the TTAB Information Specialists at 571-272-8500 to request information on the status of your case. Please be aware that the Information Specialists also use TTABVUE and likely will have no different information. Otherwise, allow a reasonable period of time to pass before calling to check status. In the rare instances, due to technical difficulties with ESTTA or extraordinary circumstances, a submission was filed by hand, traditional mail, or a delivery service, it may take some time for such newly filed papers to reach the TTAB and be processed. In contrast, submissions filed electronically appear in the record almost immediately.

When you file you should have received an ESTTA tracking number. Most papers filed electronically are uploaded immediately to TTABVUE , and you should be able to see your filing there. If your submission is not showing, or there is another problem with the submission, you can call the Information Specialist, explain the problem, and provide the ESTTA tracking number. If they are not able to resolve the problem, they will notify the TTAB’s IT specialist.

Check TTABVUE to see whether an answer has been entered in the file. If not, the TTAB sets the call-back date for entry of a notice of default about 10 days after the answer was due. You will receive a copy of the notice of default and/or email notification when a notice of default issues. If an answer has been filed on paper it will be scanned into TTABVUE and you should be able to view it there.

Our goal is to decide contested motions in less than three months. Your case will be decided in turn. If you have not received something from us after four months, you may call to check the status of your motion. For further pendency information, see the TTAB’s Dashboard .

Presently, the TTAB is rendering decisions in ex-parte appeals approximately 10 weeks after all briefs have been submitted or after a hearing date. Up to date pendency information can be found on the TTAB’s Dashboard .

Presently, the TTAB is rendering decisions in these proceedings approximately 10 weeks after the case is ready for decision. Up to date pendency information can be found on the TTAB’s Dashboard .

Presently, the TTAB is rendering decisions on these filings approximately 10 days after the filing date of a consented motion or 10 days after a response to an unconsented motion was due.

Trademark Help - Trademark Trial and Appeal Board (TTAB) - General

You can call the TTAB Assistance Center at 571-272-8500 during normal business hours, between 8:30 a.m. and 5 p.m. Eastern Time (ET), Monday through Friday, except federal holidays. For General Information press [4]; to speak with an Information Specialist press [0].

The Information Specialists are available to:

answer telephone inquiries
explain how to access pertinent legal provisions and related administrative practices
provide status information on pending cases
provide access to the files of pending cases
assist in resolving problems

There are two types of proceedings before the TTAB, an ex parte appeal from denial of your application for registration by an examining attorney, and an inter partes opposition, cancellation, concurrent use or interference proceeding.

In most cases, the Information Specialists can answer your questions, or can refer you to the appropriate person to handle your concern. However, if you need additional help, you may ask the Information Specialist to refer your call to the appropriate TTAB supervisor.

Trademark-related mail to be delivered by hand or other private courier or delivery service (e.g. UPS, Federal Express) to the Trademark Trial and Appeal Board, must be delivered to:

The Trademark Assistance Center

Madison East, Concourse level Room C55

600 Dulany Street

Alexandria, VA 22314

No. Effective Jan. 14, 2017, all filings to the TTAB must be submitted through TTAB's Electronic System for Trademark Trials and Appeals "ESTTA" . Trademark Rule 2.195(d)(3) bars facsimile transmission of papers to be filed with the TTAB. Submissions filed by fax transmission will not be accorded a date of receipt. The TTAB will not accept any filings by email.

Case files are public records and are open to the public for review, except for certain documents filed under a claim of confidentiality. The easiest way to review a file is through the electronic system, TTABVUE .

To look at a file, you can review or print it out yourself using TTABVUE. TTAB records submitted prior to approximately 2001 are kept in paper. An individual who wishes to inspect or copy one of the paper files is directed to the National Archives and Records Administration, www.archives.gov/research .

No, we do not fax or email papers to parties or other persons requesting copies. You can review or print papers from a file through TTABVUE .

You can refer to the Trademark Trial and Appeal Board Manual of Procedure "TBMP" . The TTAB also follows the Federal Rules of Civil Procedure.

You can access TTAB decisions from 11/19/1996 to the present in the TTAB Reading Room . You can also access this webpage through the TTAB homepage under “Board receipts & issued decisions.”

Yes, all of the rule changes came into effect on the same date, Jan. 14, 2017.

Yes, the rule changes apply to all proceedings, including those pending on Jan. 14, 2017. This also includes proceedings instituted prior to 2007 that are still pending.

Yes. For ex parte appeals, a suggested format is “October 10, 2015 Office Action at 2.” For inter partes appeals, the suggested format is “1 TTABVUE 2.”

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Assignment of Trademark

Updated on : Feb 22nd, 2022

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc.

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor.

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

The trademark assignment should be in writing.
The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
The assignor should have the intent and must consent for the trademark assignment.
The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
The agreement should show a clear purpose of the transaction/assignment.
The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
The signatures and witnesses must be mentioned.
The place and date of agreement execution must be mentioned.
The date and day of the assignment along with the parties to the assignment must be mentioned.
The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

Trademark assignment agreement.
Trademark certificate.
NOC from the assignor.
Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction

The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
The assignee obtains the rights of an already established brand due to trademark assignment.
The trademark assignment supports the assignor and the assignee to expand their respective businesses.
The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

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Assignment and Transmission of Trademark

Intellectual Property Rights Subject-wise Law Notes
Aishwarya Agrawal
May 23, 2023

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment.

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

Restriction on assignment or transmission that would create multiple exclusive rights.
Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties.

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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