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
|Property Type||Number||Word Mark|
|Registration Number||1234567||TRADEMARKS RULE|
|Registration Number||1234568||TRADEMARKS ARE GREAT!|
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.
The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.