There are a variety of reasons why you may want to transfer ownership of your federally registered trademark (or acquire ownership of a trademark). For example, trademarks may need to be assigned during a business acquisition or as part of a reorganization. Today’s post discusses how to transfer ownership of trademarks and why you should ensure you transfer your trademarks correctly.
Documenting the Trademark Transfer with a Transfer (Assignment) Agreement
Transferring your trademark includes two major steps: documenting the transfer between the parties and then documenting the transfer with the U.S. Patent and Trademark Office (USPTO). Before you can document your transfer with the USPTO, you’ll need to put together a trademark transfer (or assignment) agreement. This document will lay out the terms of the transfer, including payment terms, what rights are being assigned, the USPTO registration number of the trademark, and any representations and warranties from the current owner of the trademark—the current owner typically represents to the new owner that they own all rights to the trademark, have the authority to transfer the mark, and are not aware of pending claims against the trademark or its use.
In order to move forward with transferring ownership of the registered trademark with the USPTO, you are first required to have a signed trademark transfer agreement.
Filing the Assignment with the USPTO
The owner of the trademark is required to record the transaction with the USPTO anytime the owner assigns a federally registered trademark.
Luckily, the USPTO has a simple online form that you can use to record the assignment. You are required to fill out the form and submit a copy of the executed transfer agreement in order to complete the assignment process—the assignment is typically processed within one business day if filed online. There is also a $40 filing fee to record the trademark assignment.
There’s also an option to file a paper version of the online form; however, if time is of the essence, then filing online is the preferred method, because paper filed assignments typically take up to one week to be recorded (versus one day for online filings).
Why does it matter that you transfer your trademarks correctly?
If you fail to properly transfer ownership of your trademarks and the individual or company that you sell your rights to does something with the trademark that infringes on another trademark, then, because you still technically own the trademark (at least as far as the USPTO records go), you may be roped into the dispute.
On the flipside, if you purchase the rights and interest to a trademark and never properly record the transfer with the USPTO, then you may end up in a battle over ownership with the prior owner—the prior owner technically still owns the trademark until the transfer is recorded with the USPTO.
Don’t forget to transfer ownership of your state trademarks as well. In Washington, the secretary of state requires a simple form and a $10 filing fee to transfer each mark.
If you’re interested in learning more about transferring your trademarks and avoiding ownership or infringement issues associated with not properly recording the transfer, feel free to contact us.
Photo: Simon Q | Flickr
Photo: Rajiv Patel | Flickr
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