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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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Content Approved by UpCounsel

• Trademark Assignment Recordation
• Trademark Transfer: Everything You Need To Know
• How Long Does a Trademark Last
• Trademark Law
• Selling Trademarks
• Trademark Checklist
• Are All Trademarks and Names Legally Protected
• Available Trademarks
• What does Trademark Mean
• Purpose of Trademark

Navigating The USPTO Patent Assignment Search: A Comprehensive Guide

Contributor

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO's patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner's rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO's offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO's resources are invaluable for anyone involved in the intricate world of patents and trademarks.

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

Intellectual Property

United states.

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How Classification Works at the USPTO: Targeted Drafting to Influence Prosecution Outcomes

June 16, 2020

“Targeted drafting”—drafting a patent application to place it into a specific art unit—is possibly the most important part of patent prosecution strategies that few patent practitioners think about. Every patent application’s assignment to a USPTO art unit is a “lottery” that determines the difficulty of the patent examiner who will evaluate your patent application. Each USPTO art unit is made up of different proportions of patent examiners who fall somewhere along a spectrum ranging from “very applicant-friendly” to “extremely applicant un-friendly.” This means that the odds are most in your favor when your patent application is assigned to an art unit with a high percentage of applicant-friendly examiners. Even the USPTO art units that deal with similar technologies can vary greatly in their patent examiner compositions. Understanding of how classification works at the USPTO and using targeted drafting can place your patent application into a more favorable art unit and can make a big difference in the outcome of the patent process.

Patent classifications used at the patent office

There are two primary patent classification systems used at the USPTO. One patent classification system is the  Cooperative Patent Classification  (CPC) system, which is used for  prior art searches  conducted by USPTO patent examiners. The CPC contains 250,000 possible classification codes that help paint a full picture of an invention based on its CPC classifications, making it a useful language-independent patent search tool for evaluating certain invention features or profiles.

The other patent classification system used by the USPTO is the  United States Patent Classification  (USPC) system. The USPC is used for administrative functions, such as gathering performance metrics. It is also a critical part of the art unit routing process. When a patent application is filed with the USPTO, it is first sent to a classification contractor who returns the application to the USPTO with an assigned USPC classification code. The USPTO then assigns the patent application to the art unit that is mapped to the assigned USPC classification code. The criteria used for assigning USPC codes to patent applications is both technology specific and highly complex, but, because the assignment criteria are defined by specific rule sets, USPC code assignments are also potentially predictable.

Targeted drafting with the Tech Center Navigator (formerly PathWays™) and Pre-Filing Classification Reports™

With insights into how classification works at the USPTO, the  Tech Center Navigator feature, available on the  LexisNexis PatentAdvisor® patent prosecution platform , has long helped PatentAdvisor™ users evaluate their likely art unit assignments. While the keyword-based Tech Center Navigator algorithm is an excellent patent tool for making high-level decisions about patent drafting, as an algorithm, it can only go so far.

For more tailored advice on how to positively influence the likelihood your patent application will be granted, LexisNexis® Intellectual Property has collaborated with  Serco  to offer customized  Pre-Filing Classification Reports . Patent practitioners can now connect with experienced experts in assigning art units at the USPTO who will review their patent applications for guidance on potential classifications and ideas for targeting other art units with subtle patent drafting changes.

Through the Tech Center Navigator, Pre-Filing Classification Reports and the collaboration with Serco, LexisNexis IP is helping take patent drafting to a higher level by targeting specific art units with customized guidance.

Learn more about  Pre-Filing Classification Reports .

Want to gain insights into the future of your application?

Learn how you can draft your patent application to better target a favorable tech center group and get the best quality patent in the shortest amount of time.

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USPTO seeks nominations for Patent and Trademark Public Advisory Committees

CONTACT: (Media Only) Paul Fucito or Mandy Kraft (571) 272-8400 or [email protected] or [email protected]

WASHINGTON—The U.S. Patent and Trademark Office (USPTO) seeks nominations to fill up to three upcoming vacancies on the Patent Public Advisory Committee (PPAC) and up to three upcoming vacancies on the Trademark Public Advisory Committee (TPAC). The three-year term for new members, who can participate in the Committees remotely, will start on December 1, 2024. Nominations must be electronically submitted on or before July 5, 2024. Submission details are available in the Federal Register Notice titled “ Patent and Trademark Public Advisory Committees .”

“The diverse viewpoints on PPAC and TPAC are essential to strong decision-making and pressure testing ideas,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The Advisory Committees play a critical role in advising the Director and supporting and strengthening the USPTO's mission to foster and protect innovation in all forms both across the nation and internationally.”

The Public Advisory Committees for the USPTO were created in 1999 through the Patent and Trademark Office Efficiency Act to advise the Secretary of Commerce, as well as the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, on the management of patent and trademark operations, including goals, performance, budgets, and user fees. Each Committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

For more information about the nomination process, please contact the Office of the Under Secretary and Director at 571-272-8600. 

Stay current with the USPTO by subscribing to receive email updates at our Subscription Center .

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