Changing Owners of a Trademark Registration (Trademark Assignments)

In order to change the owner of a trademark registration a document called a “trademark assignment” must be filed with the United States Patent and Trademark Office (USPTO).

While the filing itself may seem simple, it is incredibly important that it is drafted correctly and that there is a clear “chain of title” from the Assignor to the Assignee. A mistake in this process could result in the cancellation of the entire registration.

We offer a flat fee service to change ownership of a trademark. The service includes:

  • Assessing the change of ownership to ensure it is being done properly and in accordance with federal trademark laws.
  • Assisting with the creation of a detailed written assignment agreement.
  • Filing the assignment with the USPTO, along with any required documentation or fees.
  • Monitoring the processing of your assignment.
  • Dealing promptly with questions or issues that may arise from the USPTO.

When you do you need a trademark assignment?

A trademark assignment is required in the case of:

  1. Transfer of ownership to a different company.
    A normal Asset Purchase Agreement typically does not properly transfer the associated trademark registrations.
  2. A change in your business entity.
    An example would be a conversion from an LLC to a corporation.
  3. A legal name change.
    If the legal name of a trademark owner changes – whether it is an individual or a business – the USPTO must be notified.

In the case of transfer of ownership to a new company, you are not merely transferring the right to use the name. You are transferring the underlying goodwill that the trademark represents to a business. If you do not transfer this underlying goodwill, the new owner will not be able to take advantage of your past use of the name and claim it as its own.

The different types of trademark assignments

Registered trademark assignments
When transferring the ownership of a registered trademark to a different company, the USPTO requires a written agreement called a “Trademark Assignment.” This is a detailed document that provides necessary information for a successful transfer of ownership, ensuring that the trademark’s underlying goodwill is transferred to the new trademark owner.

Intent-to-use trademark assignments
If your application is based on “intent-to-use” (meaning that your trademark is not yet in use), extra care has to be taken with your trademark assignment. This is because the USPTO prohibits the “trafficking of trademarks.” In other words, the USPTO does not want entities to file trademark applications solely for the purpose of selling them off.

Therefore, the only way to transfer a trademark based on an “intent-to-use” is to transfer the entire business associated with that trademark to the new owner. The situation involves nuances that would benefit greatly from the participation of an experienced trademark attorney.

Corporate name changes or conversions
Once the written Trademark Assignment is completed, the next step is filing a request online with the USPTO through its Electronic Trademark Assignment System (ETAS). However, the fact that the USPTO accepts the filing does not mean that it is valid. The associated documentation must match USPTO requirements, or the filing could be rejected.

For example, when a trademark is not properly assigned to the new company, the USPTO will refuse the Assignment. The new owner will not be able to claim the rights until a new, corrected filing is made.

The online form asks for the applicable trademark assignment option, the nature of the trademark’s change of ownership, plus additional information. You’ll pay any applicable fees and upload documentation including a cover sheet detailing the nature of the ownership change.

The benefits of using Gerben IP for changing the owner of your trademark registration

  1. Rigorous attention to detail.
    We understand the meticulous requirements and nuances involved in a successful trademark assignment filing.
  2. Accuracy and reliability.
    A poorly worded Trademark Assignment or incorrectly filed documentation can put a change of trademark ownership in jeopardy. We’ll file the necessary documentation accurately and on time.
  3. Skill and experience.
    Our attorneys have successfully transferred rights for hundreds of trademarks since 2008.

Not only is it important to properly transfer the ownership of a trademark, it is also crucial to correctly determine who should own a trademark. For more information on who should own a trademark, check out the video below.

Do you need assistance with a trademark assignment?

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