A trademark change of ownership, also known as an assignment, is the transfer of rights and interests of a trademark from one entity to another.
This transition ensures that the trademark’s protections, benefits, and obligations are carried over to the new owner. Proper documentation and official recording of this change are vital to maintain the integrity and enforceability of the mark.
Reasons for Change of Ownership:
- Business Sales or Acquisitions: When a business is sold, the trademark rights can be part of the assets transferred.
- Reorganization or Merger: Companies might merge or undergo reorganization, requiring trademark ownership to be realigned.
- Licensing Agreements: Though not a complete transfer, licenses can grant certain rights to use the trademark.
- Estate Settlements: Trademarks can be passed on as inheritances or as part of estate resolutions.
Key Steps for Trademark Assignments:
- Drafting an Assignment Agreement: This legal document details the terms of the transfer, ensuring both parties understand their obligations and rights.
- Verification of Ownership: Confirm that the assignor has valid ownership rights and that there are no restrictions or encumbrances on the trademark.
- Consideration: As with any contractual agreement, there should be valid consideration (usually monetary) involved in the transfer.
- Recording with the USPTO: It’s crucial to record the change of ownership with the USPTO’s Assignment Recordation Brand to maintain the mark’s protection. This is typically done within 3 months of the assignment.
- Notification: Inform customers, clients, and relevant stakeholders of the change in trademark ownership to maintain trust and continuity.
Common Trademark Assignment Mistakes:
- Incomplete Transfer: Ensure that all rights, including renewals, are transferred, avoiding potential future disputes.
- Neglecting Foreign Marks: If the trademark is registered in other countries, ensure you also record the assignment in the respective jurisdictions.
- Omission of Associated Assets: Often, trademarks have associated intellectual property like copyrights or patents. Ensure the agreement includes these if they are to be transferred.
Changing the ownership of a trademark is a significant decision and involves intricate legal processes.
Proper documentation and adherence to protocols ensure the trademark remains enforceable and continues to protect the brand identity.
Contact Ana Law for assistance with your next Trademark Assignment today.