uspto trademark corrective assignment

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

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 503 : Recording with Assignment Recordation Branch 503.06 : Correction of Errors in Cover Sheet or Recorded Document

Previous: §503.06(b) | Next: §503.06(d)

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

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

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

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

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

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

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

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

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

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

Trademark Attorneys Trusted For Our Experience®

Correctable and Incorrectable Errors in Trademark Ownership

By Eric Perrott, Esq.

These materials were originally presented by Eric Perrott to the American Bar Associations’s Committee on USPTO Operations Relating to the Trademarks and Ex Parte Trademark Practice as a part of their “brown bag” trademark discussions.

As trademark attorneys, we have all needed to sift through complicated ownership structures to attempt to figure out exactly who is the correct owner of the client’s trademark. Inevitably, ownership issues will surface and it is important to know when an error is correctable and when error dooms an application (or registration purposes).

There are several different kinds of errors that could occur – errors in the mark, errors in the recitation of goods and services, errors in specimens or descriptions of the mark, and errors in ownership. The first four are fairly common and are usually correctable, so long as the change does not materially change the trademark or expand the goods and services outside of the original scope of the application.

Errors in ownership, however, can create problems far into the future of the trademark registration and may not be correctable.

Correctable Errors

TMEP 1202.02(c) lays out several examples of correctable errors in identifying the application, including:

Trade Name Set Forth as Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant’s correct legal name is permitted. Cf. In re Atl. Blue Print Co. , 19 USPQ2d 1078 (Comm’r Pats 1990) (finding that Post Registration staff erred in refusing to allow amendment of affidavit under 15 U.S.C. §1058 to show registrant’s corporate name rather than registrant’s trade name).

Operating Division Identified as Applicant . If the applicant mistakenly names an operating division, which by definition is not a legal entity, as the owner, then the applicant’s name may be amended. See  TMEP §1201.02(d).

Minor Clerical Error . Minor clerical errors such as the mistaken addition or omission of “The” or “Inc.” in the applicant’s name may be corrected by amendment, as long as this does not result in a change of entity. However, change of a significant portion of the applicant’s name is not considered a minor clerical error.

Inconsistency in Original Application as to Owner Name or Entity . If the original application reflects an inconsistency between the owner name and the entity type, for example, an individual and a corporation are each identified as the owner in different places in the application, the application may be amended to clarify the inconsistency.

Change of Name . If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected, because the correct party filed, but merely identified itself incorrectly. In re Techsonic Indus., Inc. , 216 USPQ 619 (TTAB 1982).

Partners Doing Business as Partnership . If an applicant has been identified as “A and B, doing business as The AB Company, a partnership,” and the true owner is a partnership organized under the name The AB Company and composed of A and B, the applicant’s name should be amended to “The AB Company, a partnership composed of A and B.”

Non-Existent Entity . If the party listed as the applicant did not exist on the application filing date, the application may be amended to correct the applicant’s name.

Incorrectable Errors

Certain errors in identification of owner are incorrectable. TMEP 1201.02 provides some helpful examples, including:

President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Predecessor in Interest. If an application is filed in the name of entity A, when the mark was assigned to entity B before the application filing date, the application is void as filed because the applicant was not the owner of the mark at the time of filing.

Joint Venturer Files . If the application is filed in the name of a joint venturer when the mark is owned by the joint venture, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a joint venture in the entity section of the application), the applicant’s name cannot be amended.

Sister Corporation. If an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark, the application is void as filed, because the applicant is not the owner of the mark. Great Seats, 84 USPQ2d at 1244 (holding §1(a) application void where the sole use and advertising of the mark was made by a sister corporation who shared the same president, controlling shareholder, and premises as the applicant).

Parent/Subsidiary. If an application is filed in the name of corporation A, a wholly owned subsidiary, and the parent corporation (corporation B) owns the mark, the application is void as filed because the applicant is not the owner of the mark.

A company files a trademark application for wireless headphones. During the registration process, it is revealed that the company who filed is a licensee of the trademark owner, and the trademark owner would like the trademark application changed to its name.

Correctable?

No. The application may not be amended to designate another entity as the applicant. 37 C.F.R. §2.71(d); TMEP §803.06. An application filed in the name of the wrong party is void and cannot be corrected by amendment. 37 C.F.R. §2.71(d); see Huang v. Tzu Wei Chen Food Co. , 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc. , 84 USPQ2d 1235, 1244 (TTAB 2007); In re Tong Yang Cement Corp. , 19 USPQ2d 1689 (TTAB 1991).

The USPTO may record an assignment of the trademark application, but the application would still be void for lack of use at the time the application was filed (or lack of bona fide use if a 1(b) and would (rightfully) be subject to cancellation if challenged.

A company forms a new corporation and dissolves its LLC, transferring all of its assets to the new corporation. A month later, company’s counsel files a trademark application under the old LLC’s name. Once the registration issues, counsel realizes the mistake and wants to change the name to the new corporation.

Unlikely. While different states have different “wrapping up” statutes for dissolved corporations and LLC, it would be extremely difficult to prove that a dissolved company was capable of bona fide use or a bona fide intent to use a mark to sustain a trademark application under 1(a) or 1(b).

A company files a trademark application under its name, but the company that is actually rendering the services is a sister-company. A competitor brings a Notice of Opposition and one of its claims is that the application is void ab initio because the sister company was the owner, not the applicant.

It depends. This is a highly fact specific scenario. The applicant very well could be licensing the mark to a sister company while retaining the rights to the mark. In that case, the application would likely not be void. However, if the opposer can establish that the applicant did not exercise the required level of control and that the sister company was actually the trademark owner, it may doom the resulting application and no assignment or correction would fix it.

During settlement negotiations in a cancellation matter, one party discovered that it had registered its trademark as Party 1 LLC, a DC LLC, when it was, in fact, a Delaware LLC.

Probably. After discussions, it was mutually determined that this was a typographic error, as Party 1 LLC did not have a DC LLC under that name. If it had a sister company under that name, then it would not likely be correctable.

Ownership issues can be extremely challenging to recognize and, as seen above, even harder (or impossible) to fix. Every trademark attorney needs to ask his or her client’s the right questions and look into trademark ownership before it becomes a bigger problem later down the road.

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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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Oops! Now What? Corrective Assignments and Fixing Inadvertent Chain of Title Errors

We’ve all been there.  Maybe we find it in reviewing the chain of title for trademarks during due diligence.  Maybe it’s something that another company filed that has nothing to do with us.  Or maybe someone on your team made a typo (yup, no one is perfect!).  But, however it happened, it’s there, in the USPTO records:  an assignment inadvertently recorded against a registration that was not actually part of the assignment; a security interest recorded against the wrong application number; or a name change was erroneously recorded as a merger.  Regardless of why or what, the bottom line is the same:  there is an error in the chain of title for the application or registration.  Oops!  Now what?  How do we get that error fixed and removed from the USPTO trademark records?

While it takes only a few minutes to record a document against the wrong application or registration number, unfortunately it can take time, effort, and persistence to get the chain of title cleaned up and, if necessary, to get the correct owner of record listed in the USPTO database.  The USPTO permits recordation of something called a “Corrective Assignment” which does just that – it permits correction of the original recordation.

When accessing the Electronic Trademark Assignment System, or ETAS, there is an option to select “Corrective Assignment” from the different conveyance types.  The following is general information on how to fill out the form for the Corrective Assignment; your specific circumstances may require a different approach, and perhaps a call with the USPTO Assignment Division to confirm how to proceed.

• Identify what parts of the assignment need to be corrected : This is what the USPTO Assignment Division refers to as the “brief.”  Describe what you are correcting ( g. , “prior erroneous recordation of the merger with respect to Registration No. X”; “prior erroneous recordation of a security interest with respect to App. No. Y”).
• Reel and Frame : List the reel and frame number of the recordation you are correcting.
• Confirmation of Conveyance : In the last box on the ETAS conveyance type page, list the conveyance for whatever you are correcting.  So if the original document was a merger, enter “merger”; if the original document was a security interest, enter “security interest.”
• Conveying Party and Receiving Party : These should be the same parties as listed in the original recordation – unless one of those parties was misidentified and you need to fix it as part of the corrective assignment.  For example, if your company is the legal owner of a registration, and unrelated third-party Company A erroneously recorded the grant of a security interest in your registration to Bank B, list Company A as the conveying party and Bank B as the receiving party.
• Properties : This strikes us as the most counter-intuitive part of the Corrective Assignment, but it’s extremely important to get this part right!  List all of the properties from the original recordation except any properties you want removed from that inaccurate filing.  For example, if the original filing listed 10 registration numbers and only 9 should have been associated with the original filing, list the 9 that should have been there, and do not include the registration number that was incorrectly listed.  (The erroneously listed property should instead be mentioned in the brief, as discussed above.)
• Document to Upload : The USPTO requires that you upload a single PDF containing:  (a) the original recordation cover sheet, with a line crossing out the inaccurate information that should be excluded from the corrective recordation (see below illustration); and (b) the original recorded document.

PROPERTY NUMBERS Total: 3

After you submit the Corrective Assignment, it may take a few weeks for it to be processed and for a Notice of Recordation to issue.  Any incorrect properties to be removed via the Corrective Assignment should no longer be listed on the USPTO assignment records.  Trademark Status & Document Retrieval, or TSDR, records for the application or registration that was removed from the incorrect filing through the Corrective Assignment should no longer include the incorrect filing.  Ownership for any such registration or application should revert back to what it was before that document was recorded.  If it does not, the USPTO Assignment Division may tell you that you need to file a Section 7 amendment or include a “Miscellaneous Statement” in your next filing, asking the USPTO to update its records.

Bottom line:  Mistakes happen.  Thanks to the Corrective Assignment, it is possible to get those inadvertent errors fixed.

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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.

If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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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

How Can I Correct An Assignment?

• Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

• Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
• Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
• Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

• Tags Assignments , Copyrights , Patent Prosecution , Trademark Prosecution

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