How do you transfer ownership of a trademark?
To change the owner of a federal trademark registration or application, a trademark assignment should be signed and recorded with the USPTO. A trademark assignment is a document signed by the original owner (“assignor”) that transfers ownership of the trademark to a new owner (“assignee”). In most cases, the new owner does not need to sign the document because only the assignor signs the trademark assignment to transfer trademark rights. The USPTO offers a helpful online resource on trademark assignments.
What should be included in the trademark assignment?
It is important to specify the details of the trademark(s) to be transferred. The trademark assignment should include:
- name and address of the new owner (assignee);
- if the assignee is a company, the type of entity and state of incorporation;
- specific details of the trademark application(s) and/or registration(s) to be transferred; and
- language regarding the transfer of goodwill associated with the marks.
If multiple marks are involved, a single trademark assignment may include a schedule that lists all the trademarks to be transferred.
Keep in mind that a license to use a trademark is not the same as transferring ownership of the mark. In a trademark license, the licensor still owns the mark.
Can an ITU application be transferred prior to showing use of the mark?
Trademark assignments can get tricky in Intent-To-Use trademark applications. That’s because an ITU application is generally not transferable before the mark has been used. The USPTO wants to see the original applicant submit evidence of use of the mark by filing a Statement of Use / Amendment to Allege Use before filing a trademark assignment. Certain exceptions to this rule include the transfer of an entire line of business (e.g., business of the original trademark owner is acquired by a new owner). In these special circumstances, a trademark assignment filed before the mark has been used might be acceptable if the assignment contains special language to effect a proper transfer of an ITU mark.
Should trademark assignments be recorded with the USPTO?
An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner to the new owner. This will enable the public to search and recognize the new trademark owner. If the new trademark owner plans to file new trademark applications for marks similar to the assigned trademark, then it would certainly help to show that the registered trademark now belongs to the new owner.
How to search USPTO trademark assignments
The USPTO enables the public to search trademark assignment records online by reel/frame number, serial number, registration number, international registration number, assignor name, assignee name, correspondent name, applicant name or domestic representative.
How to transfer a trademark with a renewal deadline approaching
Should you transfer a trademark regisration first, and then file the renewal of behalf of the new owner? Or, renew first on behalf of the old owner, and transfer the registered trademark? It all depends on whether the old owner or new owner is making use of the mark at the time the renewal is filed.
What should the new trademark owner do?
The assignee should be diligent in tracking any deadlines for responding to outstanding Office Actions and renewing any registered marks. Typically, this can be forwarded to an experienced IP firm who will easily docket all relevant deadlines of the transferred trademark filings.
A transferred trademark application or registration should not be regarded in the same way as a transferred patent, which does not impose an obligation on the patent owner to use the patent. Trademark owners have an ongoing obligation to use the transferred trademark on the pertinent goods or services identified in the trademark filings. Ceasing the use of the marks on the relevant goods or services could jeopardize rights in the transferred marks.
What if the owner is the same, but the company has changed its name?
If the trademark owner is the same entity with a different name, the trademark owner should record a name change with the USPTO. An assignment cover sheet should be added to a copy of the corporate documents reflecting the name change, which will all be submitted to the USPTO. Be careful not to think of a different entity as merely a name change. For example, if your old company was an LLC and you formed a new corporation, those are two different entities. A trademark assignment would be required to transfer trademarks from the LLC to the new corporation.
How much does a trademark assignment cost?
Our firm charges flat fees for drafting and recording simple trademark assignments (e.g., not including license-back or special provisions). The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks
For multiple marks, we can draft a single trademark assignment to be signed only once. The executed trademark assignment must then be properly recorded against each trademark to be transferred.
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