When transferring trademark ownership in the United States, a “Trademark Assignment” must be filed with the United States Patent and Trademark Office (USPTO). While the process may seem straightforward, ensuring the accuracy of the documents and a clear chain of ownership is crucial. Any error in this process can result in the invalidation of the entire trademark transfer.
Types of Trademark Assignments
When ownership of a registered trademark is transferred from one company to another, a detailed “Trademark Assignment” agreement must be filed to ensure that the potential interests in the trademark, as well as the associated goodwill, are successfully transferred to the new owner.
If your trademark application is based on “Intent to Use” (meaning the trademark has not yet been used in commerce), special care must be taken during the transfer process. The USPTO prohibits “trademark trafficking,” meaning you cannot file a trademark solely for the purpose of selling it. To transfer an intent-to-use trademark, the entire business associated with the trademark must also be transferred to the new owner.
When a company undergoes a name change or changes its business structure (e.g., from an LLC to a Corporation), it’s essential to update the ownership of the trademark to reflect the new entity. This can be done by filing an amendment with the USPTO through the Electronic Trademark Assignment System (ETAS). While the USPTO processes the changes, it’s crucial to ensure all documents meet the necessary requirements to avoid rejection or delays in the transfer.
When is a Trademark Assignment Necessary?
When ownership of a trademark is transferred from one company to another, a Trademark Assignment must be filed. Note that a general asset purchase agreement often does not properly transfer trademark registration rights, so a separate trademark assignment is required.
When your business structure changes, such as converting from an LLC to a corporation, you must transfer the trademark ownership accordingly.
If the name of the trademark owner changes—whether for an individual or a business entity—you must notify the USPTO and file a Trademark Assignment.
Our Services
We begin by conducting a thorough assessment of the legality of the ownership change to ensure that the transfer complies with all applicable U.S. federal trademark laws. Whether it’s a transfer between companies or from an individual to a company, we ensure the process is in line with relevant legal requirements.
Our attorneys will assist you in drafting a detailed Trademark Assignment agreement to clearly outline the transfer of ownership from the assignor to the assignee. This document must be precise, legally sound, and free of errors, as any mistake could result in the revocation of the ownership transfer.
We will handle the submission of all trademark assignment documents on your behalf to the USPTO, including all necessary paperwork and fees. The entire process will be filed electronically through the USPTO’s Electronic Trademark Assignment System (ETAS). We ensure the accuracy and timeliness of the documents to avoid delays or rejections.
We will closely monitor the status of your Trademark Assignment application to ensure each step is handled in a timely manner. If the USPTO raises any questions or issues regarding the assignment, we will promptly address them to prevent any disruption to the transfer of ownership.
Whether the issue arises from documentation problems or legal matters raised by the USPTO, we will provide timely legal support to ensure the transfer process is completed smoothly.