TMEP 503.06(c): Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration
October 2017 Edition of the TMEP
TMEP Chapter Index Chapter 500: Change of Ownership 503 : Recording with Assignment Recordation Branch 503.06 : Correction of Errors in Cover Sheet or Recorded Document
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503.06(c) Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration
When the owner of an application or registration discovers that another party has improperly recorded an assignment, name change, or other interest against the owner’s application or registration, the owner should initially contact the party who filed the improper recording and have that party record corrective documents. See TMEP §503.06(a) regarding typographical errors in the cover sheet. If that party files corrective documents, the Assignment Recordation Branch will record the assignment, change of name, or other interest in the correct application or registration, and remove any references to the application or registration in which the improper recording was made. The assignment, change of name, or other interest will remain at the reel and frame number where it was originally recorded, but a search of the assignment records will not associate the improper recording with the owner’s property.
If the party who recorded the improper document cannot be located or is unwilling to file corrective documents, the owner must file documents to correct the record. Depending on the nature of the error that resulted in the improper recordation, the owner has two options.
If the existing evidence of record clearly demonstrates that the improper assignment, change of name, or other interest recorded against the owner’s application or registration ("owner’s property") was the result of a typographical error in identifying the application or registration number (e.g., the party who improperly filed mistakenly transposed property numbers), and the improper recording was filed by someone who is not the owner and does not have proper chain of title, the owner may submit a request to the Office of the Deputy Commissioner for Trademark Examination Policy to have any reference of the improper recording removed from the owner’s property. The owner must submit the request in writing, detailing the erroneous information and providing the reel and frame number where the document is recorded, and ask that the recording not be associated with the owner’s property. The request should be faxed to 571-273-8950. The request will only be granted if the current assignment records show on their face that a typographical error caused the recordation against the wrong property and the error was made by someone other than the owner. The request will not be granted if there is a dispute regarding ownership.
If the record as a whole shows that the application or registration number is consistent with the identified mark and nothing on the face of the recorded document indicates there was an error in identifying the application or registration number, the owner may record corrective documents with the Assignment Recordation Branch. A corrective assignment, name change, or other interest must include: (1) a new complete cover sheet containing the correct owner information; (2) an affidavit or declaration identifying the correct owner, stating why the previously recorded document was not proper, and providing the reel and frame number where the original cover sheet and underlying document is recorded; and (3) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41 ). See TMEP §503.03(e) for information about the cover sheet.
The affidavit or declaration must: (1) be signed by someone with firsthand knowledge of the facts; (2) identify the current owner of the application or registration; and (3) state why the document recorded against the application or registration was erroneous, and that the last correct owner or assignee has been and continues to be the owner of the application or registration.
If corrective documents are filed electronically via ETAS, the owner should check the box titled "Corrective Assignment" in the "Nature of the Conveyance" field and fill in the following required information in the fields provided: (1) identification of the parts of the assignment or change of name that need to be corrected (e.g., name of the receiving party, or trademark application serial number or registration number); (2) the reel and frame number where the original cover sheet is recorded; and (3) identification of the nature of the conveyance that was originally recorded (e.g., assignment of entire interest, change of name). The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.
If the corrected documents are filed on paper using the form provided by the Assignment Recordation Branch, the owner should check the box titled "Other" in the section titled "Nature of Conveyance" and, in the space provided, state the following: "Corrective assignment to correct the previously recorded assignment against Property Number ^ (insert trademark application serial number or registration number) recorded at ^ (identify the reel and frame number where the original cover sheet is recorded)." The owner should also write the name of the correct owner of the application or registration in both the assignor (name of the conveying party) and assignee (name of the receiving party) fields to make clear that ownership of the application or registration never changed and the chain of title remains in the last correct owner or assignee.
Whether filed via ETAS or on paper, if all the filing requirements are met in instances where nothing on the face of the recorded document indicates that there was an error in identifying the application or registration number, the Assignment Recordation Branch will record the corrected assignment or change of name in the identified application or registration, but will not remove the improper recording. However, anyone searching and reviewing the assignment records will see the corrective documents, which clarify the chain of title.
In the rare case of a dispute in ownership where one party attempts to appropriate ownership of the application or registration by filing an assignment document (or other document affecting title), the other party’s recourse is to record an affidavit or declaration (as explained above) with the Assignment Recordation Branch in support of its position. As noted above, the USPTO’s recordation of documents purporting to affect chain of title is a purely ministerial act and is not an Office determination of the document's validity or of its effect on title to an application or registration. See 37 C.F.R. §3.54 ; TMEP §503.01(c) .
How to transfer trademark ownership (trademark assignment), 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 .
Need to transfer trademarks? Email Vic at [email protected] or call (949) 223-9623 to see how we can help transfer trademarks.
How much does a trademark assignment cost?
To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings . 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. Contact us to obtain a precise quote for transferring a trademark filing.
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.
Need to transfer a trademark application or registration?
An experienced trademark attorney can help you properly transfer a trademark filing. Email me at [email protected] or call (949) 223-9623 to get started on transferring ownership of a trademark.
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Changing the Applicant Name in a Trademark Application
In the past year, I have dealt with one issue more times than I have in the previous ten years of practice: correcting or changing the applicant name in a trademark application during prosecution . Apparently trademark applicants are mis-identifying themselves more and more frequently in trademark applications than they used to.
Changing a trademark application after it is filed can be difficult. Some changes are relatively simple. But changing or correcting a trademark applicant’s name is not always a straightforward or safe thing. The reason for the correction dictates whether it can be made at all. Some changes are simple, some are complicated, and some will potentially invalidate the trademark application.
Different Types of Changes
A change of the trademark applicant name may need to be made if any of the following have occurred:
- Trademark owner changed its name without a transfer of assets
- Transfer of ownership of the trademark
- The owner was identified incorrectly in the original trademark application filing
- The trademark owner died
Trademark Filing Basis Can Limit the Change
The law limits the extent to which a trademark applicant can change an owner’s name on an intent-to-use trademark application . You generally cannot assign an intent-to-use trademark application to a third-party.
Any name changes of intent-to-use applications must reflect only changes of ownership to a business successor for the goods and services connected to the trademark. Otherwise, you must wait until the trademark application’s filing basis changes to “in-use,” such as after filing an Amendment to Allege Use or a Statement of Use .
Entity Name Change
Sometimes, a company changes its name without merging or selling. When the company simply undergoes a name change, then updating the applicant name in the trademark application is fairly easy. Go to the Electronic Trademark Assignment System (ETAS) and then select “Change of Name”:
You may also need to change the entity name if the owner was a person and changed his or her last name. For instance, if the owner got married and adopted a new last name, she could change her name in this way.
Transfer of Ownership
If the trademark has changed hands, then you should record a transfer of ownership or a trademark assignment . Typically, this will happen when one company buys a product line or another company.
The Trademark Office requires submission of the document effecting the transfer of ownership. This document will become public record. For this reason, big agreements sometimes include a separate trademark assignment as an exhibit to the agreement. This allows the attorneys to file only the exhibit without revealing all the details of the big agreement.
Correcting a Mis-Identified Applicant
When a trademark application initially identifies the wrong applicant, real problems can arise. Changing the applicant name in a trademark application like this has to be done with extreme caution. It can result in the invalidation of the application.
First, a trademark application must always identify the owner of the trademark as the applicant. When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. The application is then void and invalid.
If there was a mistake in identifying when the applicant’s name was entered, then this might be correctable. There are only a few situations in which this correction can be made:
- If the trademark owner provided its trade name, or its dba, but that name is not actually its legal name, then the Trademark Office does permit a correction. You can fix the application to change the applicant name from the dba to the entity’s actual legal name.
- If the application identified a division of the company, rather than the company itself, this mistake can be corrected.
- If you forgot to put something minor like “The” or “Inc.” then in most cases this mistake can be corrected. The Trademark Office will not tolerate any change more significant, however.
- If there is an internal inconsistency in identifying the owner, then the Office will permit correction of the applicant name. For example, in some places, you may have listed the owner as a company and in other places as an individual; the Office will let you correct this to make all references to the owner consistent.
- If the owner changed its name before filing the application and used the old name on the application, then the owner may correct the applicant name to the new name. You may be required to explain that the previous name and current name identify the same enterprise.
- Identifying partners in a partnership, rather than the partnership itself, can be corrected.
Specific Situations that Cannot be Fixed:
- Trademark applications that identify an employee of a company as the owner, rather than the company itself, cannot be corrected.
- If the trademark application identifies a first company as the trademark owner, but prior to the filing date of the trademark application, that first company had actually already transferred the trademark to a second company, then the trademark application is void.
- If a trademark is owned by a joint venture, but the application only names one of the joint venturers, then the application is void.
- If the trademark application identifies a related company which is not the owner, then the trademark application is void. For instance, if a sister company owns the trademark application, or if a subsidiary company owns the application.
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USPTO Trademark Assignment: Everything You Need To Know
USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read
Updated November 25, 2020:
USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.
Steps in Assigning a Trademark
- Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
- Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
- Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
- If your trademark is state-registered, you must also record the transfer with the applicable state.
- The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
- Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.
Points To Remember
All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.
Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.
Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.
Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .
Patent and Trademark Ownership
When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.
While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.
If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.
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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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- What is a change of ownership?
- What is a trademark assignment?
- What should be included in the trademark assignment agreement?
- Why is it important to update the USPTO?
- What is the difference between a trademark assignment and a trademark license?
1. What is a change of ownership?
A change of ownership occurs when you change the legal entity owning the trademark. The three most common types of change of ownership are change of name, change of business entity type, and trademark assignment:
- Change of name: The owner of the trademark remains the same , but only the owner’s name changes. The owner can be an individual or a business. For example, Alice Brown owns a trademark but changes her legal name to Alice Miller due to marriage (the owner of the trademark remains the same but there is a change of name). Alice must notify the USPTO of the change of name.
- Change of business entity type: The owner of the trademark remains the same , but the owner’s entity type changes. For example, ABC Inc. owns a trademark but later changes its business entity type to a limited liability company (the owner of the trademark remains the same but there is a change of entity type, from ABC Inc. to ABC, LLC). ABC, LLC must notify the USPTO of the change in entity type.
- Trademark assignment: The owner of the trademark changes . The owner sells its trademark to a completely different owner. For example, Alice Miller sells her trademark to ABC, LLC. To properly protect each party’s rights, the parties should sign a trademark assignment agreement and notify the USPTO.
2. What is a trademark assignment?
In a trademark assignment, the owner of the trademark sells its trademark to a different owner. For example, Alice Miller sells her trademark to ABC, LLC. To properly protect each party’s rights, the parties should sign a trademark assignment agreement and notify the USPTO.
3. What should be included in the trademark assignment agreement?
To protect each party’s rights in a trademark assignment, the parties should draft and sign a trademark assignment agreement. A trademark assignment agreement has the following basic elements:
- Trademark: the trademark that is being assigned
- Original owner: the name of the current owner
- New owner: the name of the new owner
- Assignment date: the date that the trademark is being assigned to the new owner
- Transfer of goodwill: language transferring the underlying goodwill
- Consideration: what the new owner is paying the original owner in exchange for the trademark
- Warranties: the original owner guarantees that they are the true owner of the trademark and have the authority to assign the trademark
- Jurisdiction: what law should govern the agreement if a dispute occurs
4. Why is it important to update the USPTO?
It is important to update ownership changes with the USPTO because it keeps you in control of your trademark.
If you own a pending trademark application and the ownership information is not updated, the USPTO may refuse your application.
Most importantly, if you own a trademark registration and does not keep the ownership information updated, you may have difficulties enforcing your trademark rights against infringers (you will need to prove to Courts or online platforms that you are in fact the true owner, even though the trademark registration states that another entity owns the trademark).
US Trademark US Trademark Registration Trademark Office Action Statement of Use Trademark renewal Trademark Licensing Trademark change of ownership and assignment Trademark watch and monitoring Trademark Opposition Trademark Cancellation Online Trademark Infringement
US Copyright Copyright Registration Copyright Enforcement Copyright Infringement Notice Digital Millennium Copyright Act DMCA take down Copyright License Copyright Assignment
China Trademark and Copyright China Trademark Registration Bad-faith Trademarks China Online Trademark Infringement China Copyright Registration
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5. What is the difference between a trademark assignment and a trademark license?
In a trademark assignment, the owner of the trademark changes. The original owner sells all of its trademark rights to a new owner. In a trademark license, the owner of the trademark does not change. The trademark owner (licensor) only gives the licensee limited rights, for example, the right to use the trademark for a certain amount of time.
Previously, I practiced for six years in the New York office of the AM Law 100 international law firm Kilpatrick Townsend, where I counseled individuals and Fortune 500 companies in various sectors, including, but not limited to, logistics, biotechnology, education, clothing, beauty, hotel, restaurant, cookware, home furnishings, and retail. I have significant experience in counseling clients in trademark and copyright matters and representing entrepreneurs in their best legal practices for their businesses.
I obtained my J.D. (Cum Laude) from Emory University School of Law and my B.S. in Biology from Emory University. If you have any questions, please do not hesitate to contact us for a free consultation.
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Trademark Attorneys Trusted For Our Experience®
Transferring a Trademark From a Personal Name to a Corporation or LLC
By Eric Perrott, Esq.
Many new entrepreneurs have a great idea for a business and jump right into it before setting up a business entity like a limited liability company or a corporation. This may include entering into some initial contracts, making deals, and even applying to register a trademark. In fact, in 2017, 19% of all trademark applications filed with the USPTO were filed by individuals.
However, many of those same entrepreneurs decide to take advantage of legal and tax benefits of an LLC or a corporation and form a formal business entity .
If you registered your trademark in your name personally (example: Sawyer, Tom INDIVIDUAL) and you intend for your new business to own the trademark, then you need to transfer the trademark and the trademark registration through a formal Assignment of Rights.
The single biggest mistake made by new entrepreneurs in transferring their trademarks is this:
A trademark assignment is not the same as a standard asset transfer.
A trademark is not treated the same as, say, a lease in an office building. You are not merely transferring the right to use a name when you transfer a trademark, but 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. This is known as a break in the “chain of title” and can be catastrophic for a brand.
Let’s say that Homer Simpson owns a trademark and trademark registration for Homes by Homer®. He originally filed in his name, personally because he wasn’t sure if his contracting work was going to be his main income.
This trademark registration entry on the USPTO database might look like this:
NEED TO ASSIGN YOUR MARK?
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Owner (REGISTRANT) Simpson, Homer INDIVIDUAL 742 Evergreen Terrace, Springfield, Oregon UNITED STATES
Now, Homer speaks with a business attorney who tells him that he would be personally liable for any mishaps that occurred while he was working on a house and recommends that he form a limited liability company and have that company own all of his business assets.
Homer starts HOMES BY HOMER LLC by filing with the state of Oregon and executes an asset transfer to transfer the lease to his work truck and all of his large tools to the LLC.
But what about his trademark registration for HOMES BY HOMER?
A normal asset transfer is typically not enough to properly transfer the trademark registration. Trademark transfers, or Assignments, usually contain certain language so that anyone in the future reviewing the “chain of title” will clearly be able to show that the trademark and registration were assigned from Homer Simpson, personally, to Homes By Homer, LLC.
While this may sound simple, an incorrect transfer can be grounds for cancellation of a trademark registration.
Common mistakes when transferring trademark rights – timing, ownership & ‘what could go wrong’
Trademark assignment issues are typically not a problem until a party is relying on its federal and common law trademark rights to stop a competitor from infringing on its trademark or defending against a claim of infringement.
A savvy entrepreneur (and his or her experienced trademark attorney) can help identify these issues before they are a problem and before they are no longer correctable or fixable through re-filing.
One of the common issues with trademark assignments is timing – a standard trademark assignment reflects that a transfer will occur when the assignment is signed. But what if the transfer already occurred? Sometimes even years prior? There are mechanisms for remedying this exact situation, but there are many potential issues, for example:
- Did you inform investors/banks/anyone else that one company owned the trademark, when you actually owned it?
- Did you sign any contract in which the ownership of a trademark or a trademark registration was a part of the term of the contract?
- Did you claim income brought in through use of the trademark personally, or through an LLC?
- Did you sign an asset agreement that mentioned “Intellectual Property,” or “trademarks”?
These are all complicated questions and the answer to these would determine what method you would need to use to properly maintain your “chain of title.”
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In some cases, it may be through a nunc pro tunc assignment, which is an assignment that memorializes, in writing, a verbal or implied assignment that occurred. In some cases, that may mean refiling the trademark in the name of the correct party.
In some cases, an ownership issue is correctable with the USPTO. However, as we’ve written about in the past, in some cases, ownership issues are fatal to a trademark application and its resulting trademark registration.
There is no one size fits all solution and you should immediately consult with an attorney to see which method would be proper for your business.
The main take-away from this article should be this: Don’t assume that your trademark and trademark registration will ultimately change ownership when you create a new business.
If and when you create a new business, discuss the situation with an experienced attorney before signing contracts, using the trademarks in business deals, or signing anything with the USPTO related to the trademark.
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Eric Perrott, Esq.
Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
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The Basics Trademark Ownership
A distinctive Mark that customers associate with your products or services is very valuable. Registering your Federal Trademark or Federal Servicemark will prevent copycats from confusing customers and damaging your reputation. Spiegel & Utrera, P.A., has helped numerous clients to register their Federal Trademark . Allow Spiegel & Utrera, P.A. to use its legal understanding to ease you through the Federal Trademark or Federal Servicemark registration process.
During the examination of a pending federal trademark application as well as after a federal trademark has registered, the owner of a federal trademark may change for various reasons. sometimes federal trademark or servicemark owners transfer their ownership of a mark to another entity, which is called an assignment. in addition, some federal trademark owners change their names while retaining ownership. in both instances, federal trademark owners should record the change of parties or change of name. additional services top of page general counsel club & registered agent service let spiegel & utrera, p.a., help you grow your business our firm has what we call the "general counsel club". select this valuable service at the time of ordering your trademark or servicemark and receive an additional one month bonus – so that your first year of service will cover 13 months plus take a $50 discount, so you pay only $89.95 for the first 13 months of service . you get unlimited telephone consultations all year long on all your legal and strategic business advice, plus our firm will prepare the notice and minutes of your business’s annual meeting; our firm will comply with all statutes and applicable laws relating to your business’s registered agent & registered office; our firm will review all mandatory state filing documents as required by the secretary of state; our firm will act as your business’ general counsel; you will receive our firm’s newsletter, "entrepreneur’s alert®", which is published six times a year and provides valuable insight into running your business from a legal and business point of view. detours and contradictions want more out of your business then don’t miss lawrence spiegel’s, 223 page detours and contradictions. use this book, and all your available resources, to begin the challenging yet fulfilling journey of entrepreneurship. as we’ll see... having a marketable idea is only the first step in a lengthy process. along the way you’ll encounter numerous detours and contradictions, risks and rewards. the price of detours and contradictions is just $13.50 if you order when forming your business. plus there is no extra charge for shipping, handling and processing as your book will be shipped with your company. also, as an added bonus, your copy of detours and contradictions will be personally autographed by lawrence j. spiegel. charlie's entrepreneurial journey building your business, or selecting the type of business to start, is easy when using charlie’s entrepreneurial journey as a guide and applying lawrence j. spiegel’s thirty eight "principles of entrepreneurship" to your business. spiegel’s latest book provides 416 pages of insight into the world of an aspiring entrepreneur named charlie. charlie’s journey leads him through topics never discussed in business books but essential to success. topics include: costs associated with acquiring a customer, urgency to purchase, saturation advertising, success leaves tracks and repetitive business. spiegel’s "principles of entrepreneurship" cannot be found anywhere else. in fact, no one has ever exposed the business secrets spiegel discloses. if you are seeking to spark your business you will find an explosion in this book. order this book at the time of forming your business and you will get charlie’s entrepreneurial journey for $19.50 which includes shipping, handling and processing, when ordered with the formation of your business. plus lawrence j. spiegel will personally autograph your copy of charlie’s entrepreneurial journey. licensing agreement you will want to protect your valuable intellectual property with a licensing agreement. typically, there are two arrangements involving a licensing agreement. the first situation, let’s call it the liability isolation arrangement, is where the individual creator and owner of intellectual property forms a company to manufacture, promote and sell goods in connection with the intellectual property, but the intellectual property is transferred to be owned by its own, separate and independent business entity that leases or grants rights to the company that is doing the manufacturing, promoting and selling. that way, the intellectual property cannot be jeopardized by the liabilities associated with the business operations of the manufacturing and sales entity. in the second situation, let’s call it the successful producer arrangement, a company is so successful, outsiders are interested in promoting and selling the products and the intellectual property connected with them, so that they want the opportunity to sell in a given area. you will be interested in learning about the exciting and fast-growing area of marketing and brand extension. in the licensing agreement, the licensor (person who owns the rights to the mark) grants to the licensee the exclusive, personal and nontransferable right to the mark. for example, a license could be specifically limited to one outlet (store) in a particular geographic territory and the licensee may only use the mark in connection with the sale and distribution of a particular product(s), and licensee may not represent that it has any ownership right in the mark. in exchange for the license, licensee pays to the licensor a fee, which typically involves a “per unit” royalty, but the parties may agree on other fee arrangements. the agreement should designate the authority to determine the mode and method of advertising, merchandising, promoting, manufacturing, selling, and distributing of the intellectual property and the products associated with it. also, who has authority to fix the prices, discounts, and terms of sale, whether for consumers, dealers, distributors, wholesale or retail. furthermore, you will want to protect the intellectual property with restrictive covenants that afford the licensor statutory remedies for violation and often prevent the licensee from disclosing confidential business information about the licensor with others. we can prepare the licensing agreement for only $350 when ordered with your business. protect yourself top of page lender's agreement & promissory note initially a business needs a cash infusion. additionally, the business may require a continuing advance of funds for some time. how does it get the money after the initial purchase of shares of the business for at least their par value, generally, the business has two choices on obtaining additional money; (1) shareholders pay for their initial shares in excess of their par value thereby creating excess paid-in capital or (2) loan money to the business. lending money to the business is the preferred method to advance money to the business because the lender is seen as a creditor of the business. the lending of money to the business is accomplished with a lender's agreement and a promissory note. both of these instruments together provide for an initial amount of a loan to the business and also provide for future advances of money the lender might make to the business. in the event of failure of the business, the loan will be fully tax deductible by the lender as a bad debt. the fee for the lender's agreement and promissory note is $150 at the time of ordering a trademark or servicemark registration. security agreement for business once you have decided to use the spiegel & utrera, p.a. lenders agreement and promissory note, the next step is to collateralize the personal property assets of the company in favor of you, the lender with a security agreement. a security agreement is a contract between a lender and borrower. the security agreement gives the lender a security interest and the right to repossess personal property that a borrower has offered as collateral if a note is not paid per its agreed terms. this right is superior to all subsequent creditors provided the lien given by the security agreement is perfected. the security agreement available from spiegel & utrera, p.a. is complete and includes provisions relating to type of collateral being secured, address where collateral will be kept, executing further documents, events that shall constitute a default, assignment of secured collateral by holder, a listing of events that would constitute default by the borrower and the rights of the lender should the borrower default. provided you have ordered the spiegel & utrera, p.a. lenders agreement and promissory note, the fee for the security agreement, if ordering a trademark or servicemark registration, is an additional $75. perfecting the lien created by the security agreement - uniform commercial code liens against personal property are perfected differently than liens on real property. the use of the phrase “personal property” does not mean property owned personally by the owner of a business. instead, the term refers to all property used inside or outside of a business (with the exception of real property) including equipment, furniture, inventory, etc. to perfect a lien against personal property used in a business, strict adherence must be followed pursuant to the uniform commercial code, documentation must be created, executed and filed with the appropriate government agencies. once recorded, the uniform commercial code makes a lien valid and serves as notice that the lien exists. usually, the first recorded lien takes priority. provided you have ordered the spiegel & utrera, p.a. lenders agreement and promissory note and the spiegel & utrera, p.a. security agreement, the documentation required to perfect the lien under the uniform commercial code is $75, if ordered at the time of forming the business. lease/agreement consultations top of page avoid costly mistakes, always , always , always have any type of contract/lease or otherwise legally binding agreement reviewed by an attorney before you sign it. we offer consultations at our office and over the phone for $100. per half hour or a fraction thereof. for your convenience, you can fax us the documents that need to be reviewed and the attorney can advise you over the phone. some of the topics you may wish to discuss include: real estate purchase reviews: review of purchase/sale agreements associated with the purchase of real property. business purchase review: review of purchase/sale agreements associated with the purchase or sale of a business. commercial lease reviews: (including business spaces such as: offices, stores, warehouses, and commercial lofts) our staff has many years of experience representing tenants. having your lease reviewed before you sign on the dotted line can save you thousands of dollars. in our review we address issues such as:.
- Rentable vs. Usable Space
- Reasonable Rental Rates
- Best Length of Lease
- Leasing contiguous space for expansion
- Assignment and Subletting
- Caps on Rent increases and expenses demanded by Landlords
- Repair Responsibilities
- Exclusivity of Tenant's Business
- Early Termination Rights
- Personal Guarantees, should you or should you not
- Renewal Terms
- Zoning Issues
- Landlord build out costs
- Change of Control of Tenant
- Signage Protection
TAX SAVING LEASE AGREEMENTS Top of Page Home Office Lease Agreement detailing the leasing of office space by a homeowner or tenant with a business for use as the Business's principal place of business. The typical tax savings under this agreement can exceed $1,200. – per year. The Home Office Lease is only $150 when ordering a Trademark or Servicemark registration, and as an added bonus to our clients, we draft the Lease in such a manner that it is automatically renewable. Motor Vehicle Lease If you use your vehicle for business purposes, it is usually much more advantageous to keep the vehicle in your name and lease the vehicle to the Business. The typical tax savings under this type of arrangement ranges between $1,500. and $3,000. per tax year. We can prepare the lease for only $150. when ordering a Trademark or Servicemark registration. Office Equipment Lease A lease which details the leasing of office equipment by a business. Once again, by leasing equipment to the Business, you create a legitimate business expense for the Business and a Tax Deduction. Typically, the tax savings under this type of arrangement can exceed $1,000 per tax year. The cost for an Office Equipment Lease is only $150. when ordering a Trademark or Servicemark registration. EMPLOYEES / INDEPENDENT CONTRACTORS Top of Page Employment Agreement If you are using employees in your business, it is important to have a written Employment Agreement to document the conditions of Employment. An Employment Agreement can be very advantageous for a business and should be required for all employees, whether new or existing. It creates a clear understanding of the arrangement between the employee and the Business and provides protection for the business. The Employment Agreement also contains other important provisions:
- It spells out the terms of employment, such as the duties, responsibilities and compensation of the employee.
- It states that the employee will not compete against the Business for a specific period of time after leaving its employment.
- It prohibits the employee from disclosing any of the Business's business records, computer data, trade secrets, methods of operation, et cetera.
- It prevents the employee from soliciting customers or clients of the Business.
- It prevents an employee, after leaving the Business's employment, from soliciting the Business's employees to work elsewhere.
The Employment Agreement is prepared in such a way that you can use it over and over again to avoid additional costs in the future. By having this Employment Agreement, the Business is given substantial clout in preventing an employee from joining a competitor, or competing against the Business and disclosing business secrets to anyone. The Agreement may be re-used by the Business as it hires additional employees, the cost of the Employment Agreement is just $150 when ordering a Trademark or Servicemark registration. Independent Contractor Agreement There are many reasons for using Independent Contractors, however, simply verbally stating that a worker is an Independent Contractor is not enough according to the IRS. Certain criteria must be met. The IRS considers 11 factors in three specified areas: Behavioral Control, Financial Control and Type of Relationship. So, before you engage the services of an Independent Contractor, it is essential that you document that relationship with a written Independent Contractor's Agreement, otherwise the IRS could hold your Company and you personally liable for the Independent Contractor's Income Tax, Social Security, Medicare Tax and Federal Unemployment Tax, which should have been withheld. As a signatory on the check used to pay the Independent Contractor, you could be held personally liable for these taxes. The Independent Contractor’s Agreement also contains other important provisions:
- It spells out the duties, responsibilities and compensation of the Contractor.
- It states that the Contractor will not compete against the Company for a specific period of time after the project is completed.
- It prohibits the Contractor from disclosing any of the Company's business records, computer data, trade secrets, methods of operation, et cetera.
- It prevents the Contractor from soliciting customers or clients of the Company.
- It prevents the Contractor, after leaving the Company, from stealing the Company's employees.
For a detailed explanation of the Benefits of using Independent Contractors’ Agreements, including a breakdown of the 11 factors the IRS analyzes and Industry examples provided by the IRS, please refer to document 239 of this Free Faxback Service. We can provide an Independent Contractor's Agreement that covers all the legal requirements and many business advantages for your Company for only $150 when ordering a Trademark or Servicemark registration SHIPPING Top of Page SHIPPING INFORMATION Trademark or Servicemark Packages generally weigh approximately 2 pounds and are available for Pick up at our office or may be shipped to you via Ground (2-3 business day) Service for a charge of $17.95 or via Overnight Delivery for a charge of $30.95. Please note, shipping and handling charges may vary. SPEED OF SERVICE OPTIONS NEXT BUSINESS DAY SERVICE If you need your Trademark or Servicemark urgently, for an additional $150, we will expedite the preparation of Trademark and Servicemark registration documents and the Trademark and Servicemark registration documents will be ready the next business day , after receipt of payment. 3 BUSINESS DAY SERVICE If you need to register your Trademark or Servicemark fast, we offer a 3 Business Day Service for an additional $75. We will expedite the preparation of the Trademark and Servicemark registration documents and they will be ready in 3 business days , after receipt of payment. REGULAR SERVICE The regular processing time for Trademark or Servicemark document preparation is approximately two weeks. Orders received after 3:30 pm will be processed the following business day.
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Home Business Trademark Assignment Agreement
Trademark Assignment Agreement Template
Use our Trademark Assignment Agreement to transfer a trademark to a new owner.
Updated May 26, 2023
A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”).
As a reference, people call this agreement by other names:
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property (IP) Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Assignment Agreement
When is a Trademark Assignment Agreement Needed
Consequences of not using a trademark assignment agreement, common situations for using a trademark assignment agreement, what should be included in a trademark assignment agreement, trademark assignment agreement sample, what is a trademark assignment agreement.
Although intangible, a trademark is valuable because customers instantly associate certain qualities with a recognized brand. A trademark assignment agreement allows the owner to properly transfer a business’s goodwill to another party.
The term “ trademark ” is frequently used to refer to both a trademark and a service mark. Trademarks identify products or goods, while service marks identify services provided. Remember that registering a trading name is different from registering a trademark.
In addition to words, phrases, or logos, a trademark can include a slogan, name, scent, shape of a product or container, and a distinctive combination of musical notes. For example, even color can be a trademark if it acts purely as a symbol, according to the 1995 US Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc.
A Trademark Assignment Agreement is commonly used to document a trademark or service mark transfer of ownership. A transfer of ownership is often needed when another person or organization sells or purchases a product or company.
Two types of trademarks can be transferred:
Without a Trademark Assignment Agreement, there is no clear record of who owns the mark. Trademarks are often part of a company’s valuable assets and should be treated like property.
These are some of the most common situations in which a trademark assignment agreement is important:
If you do not want to transfer complete ownership of the mark, consider a Trademark License Agreement. A license gives you temporary permission in a limited way. For example, a license allows you to use the trademark for a certain amount of time or a particular use or region of the country.
A simple Trademark Assignment Agreement will identify the following essential elements:
- Effective Date: when the trademark is officially transferred to the new owner
- Trademark: describe the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the US Patent and Trademark Office (“USPTO”)
- Assignor: the current owner giving up ownership of the mark
- Assignee: the future owner giving money to obtain the mark
- Consideration: how much money is being paid for the mark
- Warranties: the Assignor guarantees that they are the proper owner and have the authority to transfer the mark
- Signatures: the Assignor and Assignee must both sign the agreement
- Notary Public: the agreement should be notarized if you expect to register the trademark in a foreign country
Ask yourself the following questions when creating a Trademark Assignment Agreement:
- Who currently owns the trademark, and who will be the new owner
- What the mark consists of, and what any associated registration numbers
- Where any future disputes will be handled (“Governing Law”)
- When the trademark is officially transferred to the new owner
- Why the Assignor has the right to transfer the mark and associated goodwill
- How much will the Assignee pay to be the new owner of the mark
If the trademark is federally registered, be sure to record the change of ownership with the USPTO Assignment Recordation Branch . A fee of $40 is required to record an assignment based on the USPTO Fee Schedule . The USPTO Recordation Form Cover Sheet for Trademarks is strongly recommended when submitting your trademark. Additional questions about registering a trademark assignment with the USPTO may be answered by their Transferring Ownership/Assignments FAQs .
The sample trademark assignment agreement below shows what a typical agreement looks like:
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How to trademark a name
The trademark application process can be complicated, so you need to know what the United States Patent and Trademark Office is looking for when you apply.
What would you like to protect?
updated May 16, 2023 · 4min read
What is common law ownership?
How to file a trademark application, what should you expect after filing, what are the common reasons a trademark is rejected, is a trademark name search necessary, what happens once registration is complete.
Creating a unique business name is one of the most exciting parts of starting a new business. This name is a key feature of your brand, and it's smart to protect it with a registered trademark.
A registered trademark gives you exclusive rights to identify your product or service with that name, informs everyone that you are the owner of that trademark, and bars others from using it or piggybacking on your brand.
Here are some insights that will help you understand how to trademark a name, as well as what you need to know before you apply for trademark registration.
As you start selling your product or service, you automatically have what's called "common law ownership" of that name without having to register it formally. However, common law rights only go so far.
One limitation of common law ownership is that your name is only protected in the geographic area where it is being used. When you register a trademark with the United States Patent and Trademark Office (USPTO), however, your trademark rights protect you nationwide. This is especially helpful if you plan to sell your products or services outside your local area.
Similarly, in the event of a court dispute over your name, common law ownership only offers limited protection. With federal trademark registration , you can file a trademark infringement lawsuit in federal court. So if you really want enhanced protection, it's a good idea to register your trademark as soon as possible.
Your application must be filed with the USPTO, and it must include:
- The name and address of the mark's owner
- The name you want to protect
- The goods or services that you want to register your name for
- The basis for your filing: either use "in commerce" (if you are already using your name in business) or "intent to use" (if you haven't started using it yet)
- A specimen such as a label or a package that shows your name in use if your filing is based on use in commerce (if you file on an intent to use basis, you will provide this later)
Once you apply, your trademark application is assigned to a USPTO examining attorney for review. If problems are flagged, you'll receive a letter known as an Office action that will explain the issue and generally give you 6 months to respond. You must respond to Office actions within that deadline, or your application will be denied.
If your application satisfies all requirements, your trademark will be approved for publication in the USPTO's Trademark Official Gazette . This gives other people an opportunity to oppose it. If there is opposition, you may need legal assistance to prevail.
To avoid delays in the trademark registration process, you need to know some key facts.
- You can't register a trademark for non-business purposes. You can only trademark a brand name that you're using in business or that you intend to use in business in the near future.
- You can't register a generic or descriptive name. Your trademark name has to be distinctive or unique in some way to be approved.
- The name can't create a likelihood of confusion among consumers. This can happen when your name is too similar to another registered mark or one that's pending. When similar marks are used on related goods and services, consumers can get confused and mistakenly believe they come from the same source. That's why every trademark application must specify the type of goods or services where a trademark will be used.
A trademark search is an invaluable first step because it can prevent potential trademark problems before you even file an application or invest time and money in your business name.
The USPTO has a huge database of registered trademarks and pending applications. A basic search will uncover trademarks that match yours. The search results can alert you to a potential denial based on the likelihood of confusion with an existing trademark.
A more comprehensive search sorts through other platforms such as state trademark databases, business directories, and the internet to identify other names that are the same as—or similar to—your proposed trademark name. Doing a trademark name search can help you avoid legal and marketing troubles down the road.
If approved based on use in commerce, and you've resolved any opposition, your mark will be registered. If approved based on an intent to use the application, you would receive a Notice of Allowance, which means your mark has been allowed but won't be formally registered until you begin using it in business and file a Statement of Use and a specimen that shows your name in use.
When your registration is complete, you can begin using the registered trademark symbol, ®, next to your name. Enforcing your trademark rights is your responsibility. It's important to monitor your trademark and act promptly if you believe someone is infringing on it.
by Boni Peluso
Boni Peluso is an award-winning Creative Director and Content Strategist who has written extensively for the legal, h...
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Trademarks Assignment in Russia
Recordal of the Trademark Assignement with PTO is mandatory.
The trademark shall be assigned through concluding the relevant Deed of Assignment (DOA) by the parties. The Deed of Assignment of a trademark(s) must be registered with the Patent and Trademark Office. Without such registration, the DOA has no effect and assignment is not recorded in the Trademark Register.
The following documents are required for recordal of assignment:
- Three original Deeds of Assignment;
- The original POA signed and sealed by an Assignee.
- Payment of relevant official fees.
The regular time frame of recordal of trademark assignment is 2-4 months.
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The day before might be getting a name change to “dayworld” as fntastic files new trademark.
The last we heard of zombie-survival MMORPG “The Day Before” was about seven months ago when its official gameplay video was taken down due to a trademark dispute. While we haven’t heard anything about the game since, it seems it could be getting a title change to “Dayworld.”
- Related Reading: The Day Before Gameplay Trailer Side by Side Comparison Shows Similarities to a Lot of Other Games
A newly formed company by Mytona and developer Fntastic has filed a trademark at the USPTO for the title “Dayworld,” which suggests this is the new title of the game (via Well-Played ):
If you didn’t know, the title “The Day Before” has been one of the many issues the in-development game has faced since it was announced, which means that this title change is probably needed lest Fntastic wants to wait it out in court before deciding to release their game.
Interestingly enough, the name “Dayworld” is the title of a trilogy of books written by American author Philip José Farmer, which was first published in 1985. So even if this is indeed The Day Before’s new title, it could very well run into issues once again.
While I’m sure nailing down the right title for a game is very important, I’d say the studio first needs to give people an update on the game after months of silence is needed first — especially since it’s supposedly set to ship out this November.
We’ve reached out to Fntastic regarding this potential name-change, and will update the article if we hear anything back.
Source: USPTO via Well-Played , PCGamesN
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TRADEMARK IN RUSSIA
Mikhailyuk, Sorokolat & partners offers the full range of legal services related to trademarks in Russia including trademark search, trademark registration, trademark renewal, recordal of assignment and license agreements, recordal of changes to applications and registrations, as well as representing clients in courts. We do our best to represent our clients' interests in the most efficient and cost-effective manner.
Requirements for trademark registration
According to the legislation of Russia, designations that are similar with or identical to the trademarks previously registered or applied for registration in respect of similar goods and/or services cannot be registered.
In order to determine whether there are any similar or identical registered trademarks or filed trademark applications that may be opposed to your mark at the examination stage, please use the online trademark search tool which is available on our website or contact us to order professional trademark search.
Information and documents needed for filing
- Prints of the trademark;
- Name and address of the applicant;
- List of goods and/or services in accordance with The Nice Classification;
- Certified copies of priority documents, if priority is to be claimed (may be submitted within three months from the filing date);
- Signed Power of Attorney (legalization and notarization are not required).
Trademark registration procedure
A formal examination of a trademark application is conducted within approximately 1-2 months after filing and checks the availability of required filing documents and payment of filing fee. If the application meets filing requirements, corresponding notification is issued, after which the application passes to substantive examination, which is conducted for approximately 5-6 months. On condition that a trademark meets the requirements of protectability, the decision about registration is issued, which means that the official registration fee should be duly paid to the Trademark Office. The certificate of registration is forwarded to the applicant within approximately 1-2 months after payment of the official fee. In case the substantive examination finds any obstacles for registration, a provisional refusal in trademark registration is issued, which may be appealed within further 6 months.
The smooth trademark registration procedure usually takes 7-8 months in Russia.
Foreign applicants must be represented by a registered Russian trademark attorney
Possible oppositions and cancellation requests
Any interested party may file opposition against registration of applied designation during the whole examination period up to the issuance of decision of substantive examination.
Interested parties may also file cancellation requests after trademark registration, namely:
- cancellation based on relative grounds may be filed to the Board of Patent Disputes within 5 years from publication;
- cancellation based on absolute grounds may be filed to the Board of Patent Disputes within the entire period of validity of the trademark;
- cancellation based on non-use may be filed to the Court for Intellectual Property Rights. The grace period is 3 years from registration.
Trademark validity and renewal
A trademark is valid for 10 years from the filing date and can be further renewed every 10 years. It is possible to apply for trademark renewal within 12 months before expiry of validity term. There is also a 6-month grace period which allows applying for renewal after the deadline upon payment of a stipulated fine. Reinstatement of a lapsed trademark (after expiration of grace period) is not possible.
Required documents : signed and stamped Power of Attorney.
Frequently asked questions
- Can I file a trademark application to Russia by myself? According to the Russian legislation, only legal bodies and self-employed entrepreneurs that are registered in Russia may file trademark applications by themselves, foreign applicants should obligatory be represented by trademark attorneys.
- What are the grounds for refusal in trademark registration in Russia? A trademark is usually refused in registration if it is similar with or identical to earlier filed or registered trademarks in respect of the same or similar goods/services, as well as in case of lack of distinctiveness or misleading character of a mark.
- How can I conduct a trademark search prior to filing an application? You may order a service of a professional search or use our free online trademark search tool , where you can conduct a search by entering mark name and class number. Please consider the following information when checking the mark name: — different variants of spelling of the word should be checked (HERMES — ERMES, HERMEZ, etc); — parts of the mark should be checked together and separately (MAXINORM — MAX, NORM); — spelling of the word should be checked both in Latin and Cyrillic (Poker - Покер); — meaning of the word should be checked in other languages (Dream — Мечта in Russian); — synonyms and semantically similar words should also be checked (Big father — Big dad).
- Can a multi class trademark application be filed in Russia? Yes, according to the legislation of Russia you may file trademark applications with indication of any desired number of classes of the Nice Classification. Still please note that the amount of official fees depends on the number of classes.
- What is the cost of a trademark registration? The cost of a trademark registration in Russia depends on the number of classes in which the registration is required. Please contact us for more detailed information
- Can a trademark registration procedure be accelerated in Russia? Yes, a trademark registration procedure may be accelerated by ordering corresponding service in the Trademark Office. Thus, the Trademark Office will examine an application and issue a decision in a short time frame, namely within approximately two months. In case of positive decision, the official registration fee is to be paid, after which the registration certificate is issued.
- What is a non-use cancellation? According to the legislation of Russia, a third party may file a request for cancellation of a mark that has not been used by the holder or a representative for any period of three consecutive years after registration.
- How many times can a trademark be renewed in Russia? Trademarks in Russia may be renewed every 10 years as many times as needed upon payment of corresponding fee.
Please contact us for more information about trademark registration or quotation for filing and prosecution of a trademark application in Russia.
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Patents Assignments: Change & search ownership
Change of owner (assignment) and change of owner name.
During examination of a pending patent application or after the patent is granted, the owner of the patent may change: 1) the original owner may transfer ownership to another entity or party, through an "assignment;" or 2) the original owner may retain ownership but change its name. The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.
Change Ownership - Electronic Patent Assignment System (EPAS)
Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet. You may email questions about filing electronic patent assignments to [email protected] (link sends e-mail) .
Patent Assignment Search
Use Patent Assignment Search to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .
For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.
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