Trademark Assignment Recordal Checklist

By Casey Scott McKay · 2026-01-15

A phase-by-phase working checklist for recording a trademark assignment with the USPTO, from pulling the current record through closing the matter file. It covers the pre-recordal validity screen that decides whether the assignment is worth recording at all — goodwill, intent-to-use sequencing, and extensions of protection under Section 66(a) — then walks the recordable short-form instrument, every field of the recordation cover sheet under 37 C.F.R. § 3.31, the $40-plus-$25 fee arithmetic, and filing in Assignment Center. It explains why recording an assignment does not change the owner of record or the correspondence address, and gives the separate steps that do. It carries one invented acquisition through all ten phases so the reader can see exactly what a finished recordal file looks like. It closes with error-correction procedure under 37 C.F.R. § 3.34 and [TMEP § 503.06](/search?q=TMEP+%C2%A7+503.06), a deadlines table anchored on the three-month safe harbor in 15 U.S.C. § 1060(a)(4), and a current fee schedule.

IP and Technology > Trademarks | Checklist | Published 15 January 2026 - Updated 10 February 2026 | Casey Scott McKay - marksy.us

Summary. This is a working checklist for recording a trademark assignment with the USPTO — the documents, the fields, the fees, and the follow-through. It starts before the paperwork, with the validity screen that decides whether the assignment you are about to record is even valid: goodwill, intent-to-use sequencing under 15 U.S.C. § 1060(a)(1), and the separate WIPO track for extensions of protection under Section 66(a). It then walks the recordable short-form instrument, every field of the cover sheet required by 37 C.F.R. § 3.31, the fee arithmetic under 37 C.F.R. § 2.6(b)(6), and the filing itself in Assignment Center. The step most people miss gets its own phase: recording an assignment does not update the owner of record and does not update the correspondence address, and a registration can die quietly in a dissolved company's inbox because of it. One invented acquisition runs through all ten phases. The document closes with error correction under 37 C.F.R. § 3.34 and TMEP § 503.06, a deadlines table built on the three-month safe harbor in 15 U.S.C. § 1060(a)(4), and a current fee schedule.

Keywords: trademark assignment · assignment recordal · uspto assignment center · recordation cover sheet · chain of title · 15 usc 1060 · intent-to-use assignment · nunc pro tunc assignment · assignment in gross · goodwill · reel and frame · owner of record · correspondence address · tmep 503 · section 66a assignment · madrid mm5 · security interest release · trademark portfolio transfer

What this checklist is for

Recording an assignment is a ministerial act that the USPTO performs without judging your paperwork, and that is exactly why it goes wrong so often. The Office will record an unsigned draft, a document conveying a mark the assignor does not own, and an assignment that is void on its face. Recordation "is not a determination by the Office of the validity of the document or the effect that document has on the title." 37 C.F.R. § 3.54; TMEP § 503.01(c). The register is a bulletin board, not a title company.

So the work splits in two. The first half is legal: is this assignment valid, and does it convey what the deal documents say it conveys. The second half is clerical to the point of tedium. Both halves are on this list, because a flawless recordal of a void assignment is worse than no recordal — it puts a confident, wrong answer on the public record and invites everyone downstream to rely on it.

Who should use it. Trademark counsel closing an asset purchase or stock deal; in-house counsel cleaning up years of intra-group transfers; a solo practitioner handling a founder's LLC conversion; a paralegal running the post-closing recordal calendar.

What you'll need before you start. The executed assignment or bill of sale and every predecessor instrument in the chain; the buyer's and seller's exact legal names, entity types, and jurisdictions of organization from the certificates of formation, not the letterhead; a schedule of every serial and registration number; current TSDR and assignment-branch printouts for each property; the buyer's domicile address and a U.S. correspondence address; lien search results and any release or termination; and a payment method for the recordation fee.

If you have not yet done the diligence that produces the schedule, start with the Trademark Due Diligence Checklist; the deal-side framing lives in Trademark Due Diligence in Mergers and Acquisitions. For the doctrine behind the instruments — why an assignment differs from a license, and what a security interest actually does — read the Trademark Transactions Toolkit. This checklist is the mechanics.

The phases at a glance

| Phase | What you accomplish | Timing | |---|---|---| | 1 | Pull the record and build the property schedule | Pre-signing | | 2 | Repair the chain of title before adding a link | Pre-signing | | 3 | Run the validity screen: goodwill, ITU, § 66(a) | Pre-signing | | 4 | Draft the short-form instrument that will be recorded | Signing | | 5 | Build the cover sheet field by field | Closing +1 to 3 days | | 6 | File in Assignment Center and pay | Closing +1 to 5 days | | 7 | Verify the recordation, reel and frame | Closing +5 to 15 days | | 8 | Update the owner of record and the correspondence address | Closing +5 to 20 days | | 9 | Non-USPTO recordals and downstream substitutions | Closing +5 to 90 days | | 10 | Correct errors, docket, and close the file | Closing +15 to 90 days |

The worked example

Kettlefish Brands, LLC, a Delaware limited liability company, is buying the coffee portfolio of Brindle Coffee Roasters, Inc., an Oregon corporation and Portland cold-brew roaster. The asset purchase agreement is signed 30 January 2026 and closes 6 February 2026. The schedule of marks:

| Property | Mark | Basis / status | Wrinkle | |---|---|---|---| | Reg. No. 6,412,880 | BRINDLE (standard characters), Cl. 30 | Registered 3 Aug 2021 | Owner of record is "Brindle Coffee Company," the pre-2019 name | | Reg. No. 7,001,233 | BRINDLE & CO. and design, Cl. 43 | Registered 21 Mar 2023 | Collateral assignment of record to a bank | | Reg. No. 6,999,101 | BRINDLE, Cl. 30 | § 66(a) extension of Int'l Reg. No. 1,588,004 | Not recordable at the USPTO | | Ser. No. 97/884,512 | BRINDLE COLD BREW | § 1(b), notice of allowance 14 Oct 2025 | No statement of use on file | | Ser. No. 98/112,004 | BRINDLE RESERVE | § 1(a), published 9 Dec 2025 | Certificate will issue soon |

Two encumbrances: a collateral assignment to Willamette Community Bank recorded at reel 7412, frame 0388, and a UCC-1 with the Oregon Secretary of State. One landmine: the § 8 window on Reg. No. 6,412,880 opens 3 August 2026, six months after closing, and it must be filed by the owner of the registration.

Phase 1 — Pull the record and build the property schedule

[ ] Search the USPTO assignment records by assignor name, assignee name, serial number, and registration number — then search again on every prior name the seller has ever used.
- Why. The assignment branch indexes what was recorded, not what is true. A mark can sit under a name the company abandoned in 2019 while every later document names the current entity.
- Trap. Name-only searches miss marks held by founders personally, by a dissolved affiliate, or by a holding company nobody put on the disclosure schedule. Search by mark text as well.
[ ] Print the TSDR status and documents tabs for every property on the same day and date-stamp the printouts.
[ ] Build a single schedule with, for each property: mark as shown on the drawing, serial number, registration number, filing basis (§ 1(a), § 1(b), § 44(e), § 66(a)), registration date, class(es), current owner of record verbatim, next maintenance deadline, and any recorded encumbrance with its reel and frame.
- Why. This schedule becomes Exhibit A to the assignment, the property list on the cover sheet, and the post-closing docket. Build it once.
- The Trademark Portfolio Inventory — Template gives you the column set; the Trademark Portfolio Management Toolkit covers what to do with it afterward.
[ ] Confirm the buyer's and seller's exact legal names, entity types, and jurisdictions of organization against certificates of good standing — not against the signature block someone typed from memory.
- Trap. "Kettlefish Brands LLC" and "Kettlefish Brands, LLC" are the same company and will read as two owners in a title search five years from now. Pick the form on the certificate of formation and use it in every document, every cover sheet, and every TEAS filing.
[ ] Calendar every maintenance deadline that falls within twelve months of closing, with a 60-day internal reminder ahead of each.
- Why. In the worked example the § 8 window opens 3 August 2026. If the recordal and the owner-of-record update are not finished by then, the USPTO's reminder goes to the seller's former firm. See Docketing Deadlines: Never Miss a Renewal and Trademark Renewal Deadlines Explained.

Phase 2 — Repair the chain of title before adding a link

[ ] Read every instrument in the chain, not the cover sheets summarizing them. Order the actual recorded documents from the assignment branch.
- Authority. 37 C.F.R. § 3.54; TMEP § 503.01(c). Recordation is ministerial, so the cover sheet's description of the transaction has no legal weight of its own.
[ ] Identify every gap: a name change never recorded, a merger where the surviving entity is not the record owner, a founder-to-company transfer that only ever existed as a board resolution.
[ ] Record the missing links first, as separate documents with separate cover sheets, in chronological order.
- Worked example. Reg. No. 6,412,880 stands in the name "Brindle Coffee Company." Before recording the Kettlefish assignment, record the 2019 Oregon certificate of amendment changing the name to Brindle Coffee Roasters, Inc. One document, one property, $40. Then record the assignment.
- Trap. Recording out of order produces a register that shows a stranger conveying a mark. Examiners and later buyers read chains linearly.
[ ] Where a transfer genuinely happened but was never papered, use a confirmatory assignment executed now that recites the earlier effective date — and be honest about what it is.
- Authority. A nunc pro tunc assignment can memorialize a transfer that occurred; it cannot manufacture one. An assignment executed after a complaint is filed does not retroactively supply standing. Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 779-80 (Fed. Cir. 1996).
- Trap. Backdating the signature rather than reciting the effective date is a fraud problem, not a clerical shortcut. If the mark's declarations are also shaky, run the Trademark Fraud Claim and Self-Audit Checklist first; the standard is deliberate deception, In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009), but the discovery is unpleasant either way.
[ ] Clear encumbrances and record the releases.
- Worked example. Willamette Community Bank's collateral assignment at reel 7412, frame 0388 needs a release recorded at the USPTO and a UCC-3 termination filed in Oregon. Recording at the USPTO never perfected the bank's interest in the first place — a trademark is a general intangible and perfection runs through Article 9. In re Roman Cleanser Co., 43 B.R. 940, 944-46 (Bankr. E.D. Mich. 1984), aff'd, 802 F.2d 207 (6th Cir. 1986).
- Trap. A stale collateral assignment left on the register clouds title for a decade and shows up in the next buyer's search. The secured party must respond to an authenticated termination demand within 20 days. U.C.C. § 9-513(c).
[ ] Check for prior licenses. The assignee takes subject to them whether or not they appear anywhere on the register.
- Authority. ICEE Distribs., Inc. v. J&J Snack Foods Corp., 325 F.3d 586, 593 (5th Cir. 2003).
- Licenses inherited without quality-control machinery are a live abandonment risk. See Naked Licensing and the Trademark License Quality Control Checklist.

Phase 3 — Run the validity screen

[ ] Confirm the assignment transfers the mark with the goodwill of the business in which the mark is used, or that part of the goodwill connected with the mark.
- Authority. 15 U.S.C. § 1060(a)(1).
- Trap. The recital is necessary and nowhere near sufficient. Every assignment held void as an assignment in gross recited goodwill. Marshak v. Green, 746 F.2d 927, 929 (2d Cir. 1984); Sugar Busters LLC v. Brennan, 177 F.3d 258, 265 (5th Cir. 1999). What saves the transfer is substantive continuity — recipes, supplier relationships, customer lists, inventory, the ability to put out a product consumers will recognize. Document what actually moves.
[ ] Where the seller keeps operating, confirm it is not silently keeping the goodwill it just sold.
- Authority. Yellowbook Inc. v. Brandeberry, 708 F.3d 837, 844-45 (6th Cir. 2013); Berni v. Int'l Gourmet Rests. of Am., Inc., 838 F.2d 642, 646 (2d Cir. 1988).
[ ] Flag every § 1(b) intent-to-use application and confirm an amendment to allege use or a statement of use is already on file.
- Authority. 15 U.S.C. § 1060(a)(1). An ITU application may not be assigned before the allegation of use except to a successor to the assignor's business, or the portion of it to which the mark pertains, if that business is ongoing and existing. 37 C.F.R. § 3.16; TMEP § 501.01(a).
- Trap. This is the single most destructive error in trademark M&A because it is unfixable afterward. A violating assignment voids the assignment, the application, and any registration that issues from it. Clorox Co. v. Chem. Bank, 40 U.S.P.Q.2d 1098 (T.T.A.B. 1996); Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 U.S.P.Q.2d 1134 (T.T.A.B. 2013).
- Worked example. Ser. No. 97/884,512 (BRINDLE COLD BREW) has a notice of allowance and no statement of use. Kettlefish is buying the whole cold-brew business, which is ongoing, so the successor exception applies — but the safer move is to file the SOU on 2 February, let it be accepted, then assign. Brindle has been shipping since November and the specimen exists. See From Notice of Allowance to Registration, the Statement of Use Filing Checklist, and Intent-to-Use Applications.

Practice tip. When you cannot move the SOU ahead of closing, paper the successor exception on the face of the instrument. Recite that the assignee is acquiring the ongoing and existing business, or the identified portion of it, to which the mark pertains, and attach the asset schedule that proves it. A TTAB panel reading that document three years later should not have to guess.

[ ] Separate out every § 66(a) extension of protection. These do not travel on a USPTO cover sheet.
- Authority. TMEP §§ 501.01(b), 501.07. A change in ownership of an extension of protection takes effect when the International Bureau records it; the USPTO updates from the IB's notification. The request goes to WIPO on form MM5, either directly or through the USPTO as office of origin.
- Trap. The assignee must be eligible to hold an international registration — a national of, domiciled in, or with a real and effective industrial or commercial establishment in a Contracting Party. Madrid Protocol art. 9. A Delaware LLC qualifies. A Cayman holding company with no operations does not, and the transfer will be refused after closing. Background in The Madrid Protocol: How International Registration Works and the International Trademark Toolkit.
[ ] Decide whether accrued claims for past infringement are being conveyed, and say so expressly.
- Authority. "All right, title, and interest" does not carry the right to sue for pre-assignment infringement. The transfer must be spelled out. H & J Foods, Inc. v. Reeder, 477 F.2d 1053, 1056 (9th Cir. 1973).
[ ] Confirm the mark is actually in use for the goods recited, and price the risk if it is not.
- Why. You are buying a registration whose vulnerability travels with it. Three consecutive years of non-use is prima facie abandonment under 15 U.S.C. § 1127. See Use It or Lose It and the Trademark Abandonment Evidence Checklist.
[ ] For a famous mark, take custody of the seller's advertising, media, and recognition archive at closing.
- Why. Fame is proved from a historical record the seller owns. Lose the archive and the buyer proves fame from scratch — the proof set is in the Trademark Dilution Claim Checklist.
[ ] Confirm the transaction really is an assignment and not an exclusive license wearing an assignment's clothes, or vice versa. See Assignments vs. Licenses.

Phase 4 — Draft the short-form instrument

[ ] Draft a stand-alone short-form assignment for recordation, separate from the purchase agreement.
- Why. A recorded document is a public document. Recording the full APA publishes your purchase price, earn-out, and indemnity caps to every competitor and every future counterparty.
- Start from the Trademark Assignment Agreement — Template.
[ ] Include, at minimum: exact legal names and addresses of assignor and assignee; a present-tense granting clause; the goodwill recital; an Exhibit A schedule listing each mark with serial and registration numbers; the effective date; accrued-claims language if applicable; a further-assurances clause; and signature blocks with printed name and title.
- Trap. Use "hereby assigns," not "agrees to assign." A promise to assign in the future is not a present conveyance and does not vest title. Gaia Techs., 93 F.3d at 779.
[ ] Have the instrument signed by someone with authority, and match the printed name to the entity records.
- Authority. Assignments must be "by instruments in writing duly executed." 15 U.S.C. § 1060(a)(3); TMEP § 501.02.
[ ] Consider notarizing or otherwise acknowledging the signature.
- Why. Acknowledgment is not required, but it is prima facie evidence of execution — as is the recordation itself. 15 U.S.C. § 1060(a)(3). Cheap insurance when the assignor may later be adverse or unreachable.
[ ] If the assignee is foreign-domiciled, designate a domestic representative and retain U.S. counsel.
- Authority. 15 U.S.C. § 1060(b); TMEP § 501.04; 37 C.F.R. § 2.11 (U.S.-licensed attorney required for foreign-domiciled applicants and registrants).
[ ] Handle a partial assignment deliberately.
- Authority. You may assign a fractional undivided interest, creating joint ownership, or assign the mark and its goodwill as to some of the goods and services. TMEP § 501.06; Visa, U.S.A., Inc. v. Birmingham Tr. Nat'l Bank, 696 F.2d 1371, 1375-77 (Fed. Cir. 1982). You may not carve the United States geographically by assignment; that requires a concurrent use proceeding.
- Trap. Splitting a mark between affiliates by class is how a company creates a § 2(d) refusal against itself. Unity of control can answer it, but only if there really is unity of control. TMEP § 1201.07(b); In re Wella A.G., 858 F.2d 725, 727 (Fed. Cir. 1988).
[ ] Handle the logo copyright in the same closing, on its own track.
- Why. The design element of Reg. No. 7,001,233 is also a copyrighted work, and copyright transfer has its own writing rule and its own recordation priority window. 17 U.S.C. §§ 204(a), 205(d). See the Copyright Ownership and Chain-of-Title Checklist and Transfers, Licenses, and Termination Rights.

Phase 5 — Build the cover sheet

[ ] Prepare one cover sheet per document. A cover sheet may not cover both patents and trademarks.
- Authority. 37 C.F.R. §§ 3.28, 3.31; TMEP § 503.03(e).
[ ] Fill in every required field:
- Name of the conveying party exactly as it appears on the document.
- Name and address of the receiving party, plus entity type and citizenship — for a Delaware LLC, "limited liability company" and "Delaware." 37 C.F.R. § 3.31(a); TMEP § 503.03(e).
- The receiving party's domicile address, which is the principal place of business for a juristic entity.
- Nature of conveyance — assignment, change of name, merger, security agreement, release, or a plain description of what the document does.
- Every serial number and registration number affected.
- Execution date of the document.
- Name and address of the person to whom correspondence about the recordation should be sent.
- Signature of the party submitting the document.
- Trap. The most common defect is a mismatch between the conveying party on the cover sheet and the assignor named in the document. The branch records the mismatch and you discover it during the next deal.
[ ] Reconcile the property count and compute the fee.
- Worked example. The Kettlefish assignment covers four USPTO-recordable properties — Reg. Nos. 6,412,880 and 7,001,233 and Ser. Nos. 97/884,512 and 98/112,004. Reg. No. 6,999,101 is the § 66(a) extension and goes to WIPO instead. Fee: $40 for the first property plus $25 × 3 = $115. The earlier name-change document is a separate recordation at $40. Total USPTO recordation cost: $155. 37 C.F.R. § 2.6(b)(6).
[ ] Assemble supporting documents where the transaction needs explaining — a certificate of merger, a bankruptcy sale order, a foreclosure certificate, probate letters.
- Authority. TMEP § 503.03(b). Transfers by operation of law are recordable, and the supporting instrument is what makes the chain legible.
[ ] Supply an English translation of any non-English document, signed by the translator.
- Authority. 37 C.F.R. § 3.26; TMEP § 503.03(c).
[ ] Proofread the numbers against the Phase 1 schedule, digit by digit, out loud, with a second person.
- Trap. A transposed registration number records your assignment against a stranger's mark. Fixing that requires a corrected cover sheet plus a petition, and the stranger's chain now shows a spurious conveyance until it is resolved. TMEP § 503.06.

Phase 6 — File in Assignment Center and pay

[ ] File electronically through the USPTO's Assignment Center at assignmentcenter.uspto.gov, which replaced the legacy Electronic Trademark Assignment System (ETAS).
- Trap. Old checklists, old bookmarks, and old form banks still point at ETAS. If your firm's precedent file says "ETAS," it has not been updated since the migration, and the rest of it is probably stale too.
[ ] Upload the document as a legible copy. The Office keeps the copy; it does not return originals.
- Authority. 37 C.F.R. § 3.25(a); TMEP § 503.03(a).
[ ] Pay the recordation fee. The fee is per property, not per page — a 200-page agreement covering one registration still costs $40.
- Authority. 37 C.F.R. §§ 2.6(b)(6), 3.41; TMEP § 503.03(d). Fees are not refunded if the submission fails to meet the recording requirements.
[ ] Capture the confirmation and the assigned recordation date before you close the browser.
- Authority. The recordation date is the date the document meeting the requirements was filed. 37 C.F.R. § 3.51; TMEP § 503.05. That date is what you will measure against the three-month window in 15 U.S.C. § 1060(a)(4).
[ ] If a pending application is close to issuance, say so in a separate request to the examining attorney.
- Authority. For a certificate to issue in the assignee's name, the assignment must be recorded and a request filed while the application is being prepared for issuance. 15 U.S.C. § 1057(d); 37 C.F.R. § 3.85; TMEP § 502.02.
- Worked example. Ser. No. 98/112,004 (BRINDLE RESERVE) published 9 December 2025 and will register within weeks. Record the assignment and file the request now, or the certificate issues in Brindle's name and Kettlefish pays $100 electronically for a new certificate under 37 C.F.R. §§ 2.171, 2.6(a)(8).

Phase 7 — Verify the recordation

[ ] Pull the assignment record five to ten business days after filing and capture the reel and frame numbers. Save the PDF to the matter file with a filename containing the reel and frame.
- Why. The reel and frame is the citation you will give the examining attorney, the TTAB, opposing counsel, and the next buyer. "We recorded it" is not an answer.
[ ] Confirm every property on the cover sheet actually posted. Check them one at a time against the Phase 1 schedule.
- Trap. A property can drop out of a multi-property recordation without any error message. Nobody notices until a § 8 comes due on the orphan.
[ ] Open the recorded document image and read it. Confirm the pages are legible, complete, and the right document.
[ ] Confirm the recordation date is within three months of the assignment's execution date.
- Authority. 15 U.S.C. § 1060(a)(4): an assignment is void against a subsequent purchaser for value without notice unless recorded within three months of the assignment or before the subsequent purchase.
- Why it matters. Three months is a safe harbor, not a grace period. Miss it and you are not automatically out — you still beat anyone who buys after you record. But between month three and the day you record, a bona fide purchaser can take your mark. The arithmetic, including the race case, is worked through in Trademarks in the Deal.

Phase 8 — Update the owner of record and the correspondence address

This is the phase that gets skipped, and it is the one that kills registrations.

[ ] Understand that recording is not updating. Recording a document with the Assignment Recordation Branch may not change the ownership shown in the Trademark database, and it does not change the correspondence address.
- Authority. TMEP §§ 503.01(a), 503.01(b).
[ ] Check whether automatic updating applied. The Office updates ownership automatically only in defined circumstances, and never for partial assignments or security interests.
- Authority. TMEP §§ 504, 504.01, 504.02.
[ ] Where it did not apply, file a request for manual updating identifying the reel and frame of the recorded document.
- Authority. TMEP §§ 505, 505.01.
[ ] Separately file a change of correspondence address and, if counsel is changing, a revocation and new appointment of attorney.
- Trap. In the worked example, Brindle's outside firm remains the correspondent on all four properties. The § 8 courtesy reminder for Reg. No. 6,412,880 goes out in August 2026 to a firm that no longer represents anyone in the matter, the six-year deadline runs, the grace period runs, and the registration cancels. There is no petition that fixes a missed § 8 on these facts.
[ ] Pull TSDR for every property afterward and confirm both the owner and the correspondent changed. Screenshot it.
[ ] Hand the maintenance calendar to whoever will actually own it, with the filings identified by name and date.
- See Filing a Section 8 Declaration of Continued Use, the Section 8 & 9 Renewal Checklist, the Section 8 Declaration — Template, and, once five years of post-registration use accumulate under the new owner, Section 15 Incontestability.

Trap. A § 8 declaration must be filed by the owner of the registration. If the assignment is unrecorded and the database still shows the seller, the buyer's filing invites an ownership objection at exactly the moment it cannot be cured. Record first, then file.

Phase 9 — Non-USPTO recordals and downstream substitutions

[ ] File WIPO form MM5 for every international registration and extension of protection, and confirm the assignee is eligible to hold the IR.
- Worked example. Int'l Reg. No. 1,588,004 and its U.S. extension, Reg. No. 6,999,101. The IB fee is 177 Swiss francs. TMEP §§ 501.01(b), 501.07.
[ ] Instruct foreign counsel to record in each national registry, and release escrow only against written confirmation that the local register shows the buyer.
[ ] Record with each state trademark office holding a state registration. Several secretaries of state require their own form and will reject a federal-style cover sheet.
[ ] Update CBP recordations for any mark recorded for border enforcement, and re-enroll in marketplace brand registries under the new owner.
- See Stopping Counterfeits at the Border and the Anticounterfeiting Program Checklist.
[ ] Substitute or join the assignee in every pending TTAB proceeding and every court case.
- Authority. TBMP § 512.01; Fed. R. Civ. P. 25(c). The Board generally wants the assignment recorded before it will substitute. Procedure in the TTAB Practice Toolkit and TTAB Proceedings: Opposition vs. Cancellation.
[ ] Transfer domains and social handles, then re-lock them.
- Trap. An inter-registrar transfer lock of up to 60 days follows a change of registrant under the ICANN Transfer Policy. Sequence the registrant change and the registrar move so the lock does not strand the domain mid-deal.
[ ] Record the copyright assignment for logo artwork with the U.S. Copyright Office within the priority window.
- Authority. 17 U.S.C. § 205(d) — one month for a domestic execution, two months for a foreign one, or any time before the conflicting transfer is recorded.

Phase 10 — Correct errors, docket, and close the file

[ ] For a typographical error on the cover sheet, file a corrected cover sheet with a copy of the originally recorded document and a new recordation fee.
- Authority. 37 C.F.R. § 3.34; TMEP § 503.06(a). The Office corrects a cover sheet error only if the error is apparent when the cover sheet is compared with the recorded document.
- Trap. The corrected cover sheet gets a new recordation date. If the correction lands after the three-month window in 15 U.S.C. § 1060(a)(4), you have lost the safe harbor for whatever the correction fixed. Proofread in Phase 5; this is why.
[ ] For an error inside the recorded document itself, record a corrective document — the Office will not alter what was recorded.
- Authority. TMEP § 503.06(b).
[ ] For a document recorded against the wrong application or registration, file a corrected cover sheet and, where the branch cannot resolve it, a petition to the Director.
- Authority. 37 C.F.R. § 2.146; § 2.6(a)(15) ($400 electronically). Expect the erroneous entry to remain visible with a corrective notation.
[ ] Assemble the recordal file: executed assignment, cover sheet, filing confirmation, fee receipt, recorded document image with reel and frame, post-update TSDR printouts for owner and correspondent, MM5 receipt, foreign counsel confirmations, lien releases, and the final property schedule.
- Why. This is the packet the next buyer's counsel will ask for. Assembling it now takes an afternoon; reconstructing it in five years takes a week and never quite works.
[ ] Load every property into the docketing system under the new owner, with the buyer's counsel as correspondent, and turn on watch services.
- See Trademark Watch Services: What to Monitor and the Trademark Maintenance and Survival Toolkit.
[ ] Schedule the first Annual Portfolio Review for twelve months out, and confirm the acquired marks are integrated into the buyer's brand architecture rather than orphaned. Building and Managing a Trademark Portfolio covers the ongoing work.

Common Mistakes

Recording the purchase agreement. The commercial terms become public and permanent. Record a short-form instrument.
Treating the goodwill recital as the analysis. Every assignment voided as an assignment in gross recited goodwill. What matters is whether the business moved.
Assigning an intent-to-use application before the allegation of use. 15 U.S.C. § 1060(a)(1). A sequencing error, not a drafting error, and unfixable after the fact.
Putting a § 66(a) extension on a USPTO cover sheet. The operative recordal is at the International Bureau on form MM5.
Recording the assignment before the missing name change. The register then shows a party who does not own the mark conveying it.
"Agrees to assign" instead of "hereby assigns." A promise is not a conveyance.
Recording and stopping. Ownership of record and the correspondence address are two separate updates, and neither happens automatically for most documents. TMEP §§ 503.01(a), 503.01(b).
Assuming recordation validates anything. 37 C.F.R. § 3.54. The Office records unsigned drafts every week.
Missing a property in a multi-property recordation and not reconciling afterward.
Recording at the USPTO to perfect a security interest. Perfection is an Article 9 filing where the debtor is organized. The USPTO recordal only gives notice.
Letting the three-month window run while the parties argue about the disclosure schedule. Record the marks you agree on now and supplement later.
Forgetting that the buyer inherits the seller's problems — prior licenses, thin specimens, non-use gaps, and every declaration the seller ever signed. Diligence framing in the IP Due Diligence Toolkit and the Trademark Integrity Toolkit.

Deadlines at a Glance

| Deadline | Length | Runs from | Authority | |---|---|---|---| | USPTO recordation safe harbor | 3 months, or any time before the subsequent purchase | Date of the assignment | 15 U.S.C. § 1060(a)(4) | | Record before the certificate issues | Before the registration certificate is prepared | Allowance | 15 U.S.C. § 1057(d); 37 C.F.R. § 3.85; TMEP § 502.02 | | ITU assignment bar lifts | On filing the amendment to allege use or statement of use | Filing basis | 15 U.S.C. § 1060(a)(1); 37 C.F.R. § 3.16 | | Statement of use after a notice of allowance | 6 months, extendable in 6-month increments to 36 | Notice of allowance | 15 U.S.C. § 1051(d) | | § 8 declaration of continued use | Between the 5th and 6th anniversary; 6-month grace with surcharge | Registration date | 15 U.S.C. § 1058 | | Combined § 8 and § 9 renewal | Within the year before each 10-year anniversary; 6-month grace | Registration date | 15 U.S.C. §§ 1058, 1059 | | § 71 affidavit for a § 66(a) registration | Same 5-6 year and 10-year cadence, separate from WIPO renewal | U.S. registration date | 15 U.S.C. § 1141k | | § 15 incontestability | Any time after 5 consecutive years of post-registration use | Registration | 15 U.S.C. § 1065 | | Copyright Office recordation priority | 1 month domestic, 2 months foreign | Execution of the transfer | 17 U.S.C. § 205(d) | | Secured party's response to a termination demand | 20 days | Authenticated demand | U.C.C. § 9-513(c) | | UCC-1 effectiveness after a debtor name change | 4 months | The name change | U.C.C. § 9-507(c) | | ICANN inter-registrar transfer lock | Up to 60 days | Change of registrant | ICANN Transfer Policy | | TTAB substitution of the assignee | No fixed date; generally requires a recorded assignment | Closing | TBMP § 512.01 |

Fees. Confirm against the current USPTO schedule before quoting a client.

| Item | Amount | Authority | |---|---|---| | Recording a document — first property | $40 | 37 C.F.R. § 2.6(b)(6)(i) | | Recording — each additional property in the same document | $25 | 37 C.F.R. § 2.6(b)(6)(ii) | | New certificate of registration in the assignee's name | $100 electronic / $200 paper | 37 C.F.R. §§ 2.171, 2.6(a)(8) | | Certificate of correction of registrant's error | $100 electronic / $200 paper | 37 C.F.R. § 2.6(a)(9) | | Petition to the Director under § 2.146 | $400 electronic / $500 paper | 37 C.F.R. § 2.6(a)(15) | | WIPO change of ownership (form MM5) | 177 Swiss francs | Madrid Protocol fee schedule |