A trademark assignment must be signed and recorded with the USPTO in order to change the owner of a federal trademark registration or application. A trademark assignment is a document that transfers trademark ownership to a new owner (the “assignee”) and is signed by the original owner (the “assignor”).Because only the assignor must sign the trademark assignment in order to transfer trademark rights, the new owner typically does not need to sign the document. A helpful online resource on trademark assignments is provided by the USPTO.
What should be included in the assignment of the trademark?
It is essential to specify the specifics of the transferred trademarks. The following should be included in the assignment of trademark:
- the new owner’s name and address (the assignee);
- if the assignee is a business, the type of business and the state in which it was founded;
- specific information regarding the to be transferred trademark applications and/or registrations; and
- language concerning the transfer of the marks’ goodwill.
A schedule that lists all of the trademarks that need to be transferred may be included in a single trademark assignment if multiple marks are involved.
Keep in mind that transferring ownership of a trademark is not the same as granting a license to use the mark. The licensor remains the owner of the trademark in a trademark license.
How to search for USPTO trademark assignments?
The public is able 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. The USPTO also lets people search for trademark assignments by name.
How to transfer a trademark as the renewal deadline draws near?
Should you transfer the trademark registration first, and then file the renewal on the new owner’s behalf? Or, transfer the registered trademark while first renewing on behalf of the previous owner?It all depends on whether the mark is being used by the new or old owner when the renewal is filed.
What should the new owner of the trademark do?
The assignee should keep careful track of any deadlines for renewing registered marks and responding to unresolved Office Actions. In most cases, this can be sent to a seasoned IP company, which will quickly and easily record all relevant deadlines for the transferred trademark filings.
A transferred patent should not be compared to a transferred trademark application or registration because the patent owner is not obligated to use the patent. Owners of trademarks are obligated to continue using the transferred trademark on the relevant goods or services listed in the trademark filings. Rights in the transferred marks could be jeopardized by ceasing to use them on the relevant goods or services.
What if the owner remains the same but the business takes on a new name?
A name change should be recorded with the USPTO if the trademark owner is the same entity with a different name. A copy of the corporate documents that reflect the name change should include an assignment cover sheet. These documents will all be sent to the USPTO. Be careful not to mistake a new entity for merely changing its name. If, for instance, your previous business was an LLC and you established a new corporation, those are two distinct entities. To transfer trademarks from the LLC to the new corporation, a trademark assignment would be required.
