electronic trademark assignment system (etas)

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Trademark Assignment: How to Transfer Trademark Ownership

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

Table of Contents

What Is Trademark Assignment?

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

When Is the Assignment of Trademark Procedure Necessary?

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

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

Here’s How to Transfer Trademark Ownership

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

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

1. Due Diligence

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

2. Determine Authority to Transfer the Trademark

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

3. Execute Trademark Assignment Agreement

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

What Should Be Included in a Trademark Assignment Form?

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

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

4. Complete Ancillary Agreements

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

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

5. Notify the USPTO of Change of Ownership

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

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

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

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

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

Need Help with a Trademark Assignment Agreement?

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

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

Trademark Assignment Template Sample

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

Key Takeaways on How to Transfer a Trademark

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

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

Depending on the complexity of the sale, you may be able to incorporate a trademark assignment into an asset purchase agreement (APA) rather than using a separate trademark transfer agreement. Generally, APAs are much more complex documents, and an assignment agreement is a better vehicle for transferring titles.

How Do I Submit a Trademark Assignment to USPTO?

The USPTO has an Electronic Trademark Assignment System (ETAS) where you can submit and record the transfer of the trademark or simply update name change in ownership (e.g., if you recently married or divorced). Alternatively, you can submit the information via mail using a Recordation Form Cover Sheet.

Do Patent Assignments Need to Be Recorded?

Yes, recording a patent assignment with the USPTO is recommended and sometimes necessary for many of the same reasons why recording a trademark assignment is worthwhile. You can record a patent assignment through a similar USPTO system as you would for a trademark, known as the Electronic Patent Assignment System.

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USPTO Unveils Modernized Assignment System: IPAS to Replace ETAS and EPAS

• December 7, 2023

In a move towards enhancing online services, the U.S. Patent and Trademark Office (USPTO) is undergoing a transformation by merging the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into a unified and modernized platform – the Intellectual Property Assignment System (IPAS). Scheduled for launch on January 15, 2024, IPAS aims to streamline processes and provide a seamless experience for users.

IPAS consolidates patent and trademark reassignment requests, facilitating the transfer of ownership or modifications to the owner’s name on pending applications, granted applications, or registration. Beyond simplifying these transactions, the system also introduces improved customer service by allowing the USPTO to track request statuses, record essential data, and issue reports from a single, secure cloud-based system.

This initiative reflects the USPTO’s commitment to staying at the forefront of technological advancements, ensuring a more user-friendly and efficient experience for its customers. Read USPTO’s official announcement here to learn more.

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Ant-Like Persistence

USPTO postpones again, and lies about, and renames, its “son of EPAS/ETAS”

(Update:  the migration has now been postponed for a third time, see blog article .)

It’s embarrassing to see the USPTO lying about what it previously said about when it would launch its “son of EPAS/ETAS” system. 

Today the USPTO said this:

As part of our efforts to improve our services and strengthen the customer experience, as previously announced , on January 22, 2024 , Assignment Center will replace the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS).

(screen shot quoted above.)  It is simply false for the USPTO to say today, that what it “previously announced” was a launch date of January 22, 2024.  If you click on the link, you will reach (quoted at right) what purports to be a press release on the USPTO’s web site dated November 9, 2023.  But the USPTO faked it.  What the USPTO really said on November 9, 2023 is:

As part of our updates to online services, The U.S. Patent and Trademark Office (USPTO) is reforming the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system:  the Intellectual Property Assignment System (IPAS).  IPAS will be available to customers starting on January 15, 2024.

What happened is that today, January 11, 2024, the USPTO replaced the November 9, 2023 press release with a backdated fake.  The USPTO now pretends that what it said on November 9 was that the launch date would be January 22, when what the USPTO actually said on November 9 was that the launch date would be January 15.  You can see, quoted at right, what the USPTO actually said on November 9, 2023.

I guess this seven-day postponement of the launch date is so embarrassing to the USPTO that it actually lies about what it previously said about the launch date.

The backdated fake also pretends that on November 9, 2023 the name of the new system was supposedly “Assignment Center”.  But on November 9, 2023 the name of the new system was a four-letter initialism IPAS (“Intellectual Property Assignment System”).

This is not, however, the first postponement of the launch date of this “son of EPAS/ETAS” system.  On October 31, 2023, the USPTO originally announced (screen shot at right) that the launch date would be December 4, 2023.

The USPTO says:

Starting January 22 , how-to guides, training materials, and a set of frequently asked questions will be available on the Assignment Center webpage.

USPTO says it plans to shut down the EPAS and ETAS systems at the same time that it launches the successor system.  This means that if there are any defects or bugs in the new system, users will not be able to work around the defects and bugs by e-filing in the legacy systems.  And this means that if there are any problems with the user interface design that make it difficult or impossible to figure out how to accomplish particular tasks, users will not have had any opportunity to work them out ahead of time.  Instead, the “how-to guides” and “training materials” and “set of frequently asked questions” will be withheld from users until the actual launch date.

Conspicuous by its absence in USPTO’s press releases and announcements is any hint or suggestion that any effort was made to ask users whether there was even a problem for which this new system is supposedly the solution.  I am not aware of any user having asked for the USPTO to shut down the legacy systems or to replace them with a new and different system.  The USPTO did not, for example, reach out to the practitioner community to find out what new features the practitioner community actually wants for this new system.  The USPTO did not, for example, reach out to the practitioner community to find out what was supposedly wrong with EPAS or ETAS that supposedly needed fixing.  The USPTO did not share initial user interface designs or mock-ups with the practitioner community.  The USPTO did not conduct any external-user alpha testing or beta testing.

Perhaps this second postponement of the launch date of the new system will permit the USPTO to squeeze in at least a little bit of meaningful customer involvement.  In the time between today (January 11) and the again-postponed launch date (January 22), perhaps the USPTO can:

• get in touch with actual users to provide a beta testing opportunity;
• get in touch with actual users to find out if there are things wrong with EPAS/ETAS that need fixing in AC;  and
• get in touch with actual users to find out what actual users would like to see in AC.

There is no doubt that the members of  the Patent Center listserv  and the members of  the e-Trademarks listserv  would be willing, and indeed eager, to assist the USPTO with these three things.

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6 replies to “uspto postpones again, and lies about, and renames, its “son of epas/etas””.

As Carl pointed out November 12, 2023, the Patent Office did a similar thing when it changed the launch date of Patent Center on an already-issued press release to reflect the delayed launch.

Here’s Carl’s post on that: https://blog.oppedahl.com/uspto-tries-to-conceal-the-patent-center-blink/

So it’s not quite statistically accurate to say it’s a trend, but it’s still wrong both times. How often is this done? And why?

Thanks Carl. Until now I thought it was just me who had missed the announcements about the alpha- and beta-testing and the transition period, and who is cynical of the PTO’s IT abilities based on past experience. But I am not as optimistic as you: I don’t see the PTO breaking its unblemished streak of failing to engage the user community before launch.

Applicants and attorneys get zapped if they make a false statement to the PTO. But the PTO lying to the public? No problem!

I don’t think lying at the PTO started with Kathi Vidal, but it certainly seems to have taken on new heights on her watch.

Since this is the same pattern we saw in November with the harmful Patent Center replacing the functional legacy systems, maybe something less ethereal than organizational pride is involved. Could it be that there are some bonuses on the line for meeting the “previously announced” dates of implementation — whether it is bonuses to USPTO staff or to the mysterious software company with the $2 billion no-bid grant for software work for the USPTO? Is it possible that by deceptively changing the listed dates, they can pretend the project was ready on time and let the bonus bucks flow?

The PTO announced today on the systems availability page that ETAS and EPAS will be down starting at 9am on Friday, January 19 for the launch of “IPAS (Assignment Center)” and expect the new system to be available at 11pm ET at assignmentcenter.uspto.gov. So we now have a URL for the new system, even though trying that URL now gets “Access denied.”

Of course, neither ETAS nor EPAS appear reachable right now.

Thank you Richard for commenting. Your comment prompted this blog article .

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PatentAssociate.com

Stephen E. Zweig, PhD JD, Patent Attorney

Patent and Trademark assignments

The uspto epas/etas assignment process, and legal chain of title principles, help the public determine who owns a given patent or trademark. “ nunc pro trunc assignments ” are sometimes used to clear up gaps in the record..

Who owns that patent? Some countries automatically assume that patents belong to the employer. However the US legal system presumes that patents originally belong to their human inventors. This is based on various “right of capture” cases involving foxes and other critters that go back to medieval/roman times.

The chain of title

A “chain of title” shows how ownership and other rights to a piece of property changed over time. The underlying concepts are based on real estate law. Over over hundreds of years, this law developed methods to protect the innocent against various real estate scams. Here we will skip over many years of colorful and sometimes bloody history and focus on modern-day IP.

The law requires an unbroken series of records handing off ownership from one owner to the next. This chain must extend from the original owners (the inventors) to the present owners. The USPTO helps manage this process through their online “Electronic Patent Assignment System” (EPAS). The USPTO also has a similar system for Trademarks, called the “Electronic Trademark Assignment System” (ETAS).

EPAS – Electronic Patent Assignment System

The EPAS system automatically records (and display s) the chain of title from the original inventors to the present owner(s). It is often useful to see “who” owns “what.”

Real estate history is full of frauds, such as selling the same property multiple times to unsuspecting purchasers. So, various legal anti-fraud measures have evolved.

In particular, the law tends to treat innocent “good faith” (bona fide) purchasers more kindly. But the purchasers must show some prudence, such as by looking up assignment records before purchasing. This system won’t work if the assignment records are not current. To keep the system up-to-date, the USPTO follows 35 USC § 261 , which states:

35 USC § 261: An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

What does this legalese mean? It means you should register your patent (or trademark) assignments within three months .

Nunc Pro Trunc Assignments

In the real world, businesses are often bought and sold with long contracts. The IP list usually ends up in the appendix of these contracts. As an intangible property, everyone tends to overlook this appendix. Then, sometimes much later (often as part of due diligence for a later sale), someone notices that the IP was not correctly assigned. The results are often quite exciting. Can you say “ SNAFU?”

Retroactive assignments : You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these “ Nunc Pro Tunc Assignments ” (Latin for “now for then”). However, the drawback of such late assignments is that the “automatic” anti-fraud legal protection no longer operates. You don’t need these automatic protections if there is no fraud. However, the automatic protection occurring with on-time filing is preferable.

Illustration: Blockchain by James Fok from the Noun Project

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Thursday, November 30 2023   \  Published by USPTO.

Coming soon: USPTO’s new modernized assignment system is replacing ETAS and EPAS

November 9, 2023

As part of our updates to online services, the U.S. Patent and Trademark Office (USPTO) is reforming the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system: the Intellectual Property Assignment System (IPAS). IPAS will be available to customers starting on January 15, 2024.

This new system provides integrated information support by processing all patent and trademark reassignment requests, in which a patent or trademark holder transfers ownership or changes the owner’s name on their pending or granted application or registration. IPAS also enhances customer service by enabling USPTO staff to track the status of customer requests, record data, and issue reports from one secure cloud-based system.  Read more

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USPTO Enhances Trademark Assignment Filing System

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Coming soon: USPTO’s new modernized assignment system is replacing ETAS and EPAS

Published on: 11/09/2023 15:22 PM

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