A federal trademark registration with the United States Patent and Trademark Office is one of the most important assets that a business can have.
As a reminder, a trademark is a brand name, logo, or design. A trademark is something that lets consumers know that you are the source of a good or service.
One of my favorite trademarks is the PlayDoh smell! Yes, PlayDoh trademarked their signature smell and no other company can have a product with the distinct smell of PlayDoh.
You may want to transfer a trademark because of a name change, or because you sold ownership to another company. You must record this change with the USPTO. Don't jeopardize the goodwill of the business by not properly executing your transfer.
What are the steps to transfer ownership?
First, you need to notify the USPTO via the Electronic Trademark Assignment System. Fill out the required form by clicking here https://etas.uspto.gov/.
Second, you might need to submit the document that transferred ownership. This is usually determined by state law. It is often a copy of the trademark assignment agreement or an excerpt from this contract.
Third, you need to pay the required filing fee. The fee is $40 for the first trademark form and $25 for a subsequent filing.
Lastly, you can check the Trademark Status and Document Retrieval (TSDR) to verify that the correct ownership information has been recorded. If the information has not been updated, you must notify the USPTO. The method of contact is determined by the status of your trademark application.
What is a Trademark Assignment Template?
A Trademark Assignment is an agreement from one trademark owner to another owner. For example, an original owner might want to assign all trademark rights to a newly formed entity (like an LLC). The owner may have filed the trademark application in his or her personal name, and now wishes to transfer the trademark registration into the business's name. [Click here to read about the importance of separating your business and personal assets.]
A current owner might also want to transfer their trademark to a completely separate business following a sale.
Regardless, a trademark assignment is basically a contract that assigns ownership of a trademark to another person or entity.
The contract is usually a short 2-3 page document. The main terms usually include the transferor/transferee information, effective date, the extent of the transfer of ownership (i.e. whether it is a complete assignment), and a section to sign in front of a notary.
What laws govern the assignment of a trademark?
The applicable trademark law depends on the type of registration. If you have a state trademark registration, then state law applies to your assignment. If you have a federal trademark registration, then the Lanham Act is the governing law.
If you do not have a federal or state trademark registration, you may still have common law trademark rights that protect your brand and unregistered trademarks.
It is important to make sure that your trademark transfers are pursuant to the appropriate state or federal statute.
Where can I get a Trademark Assignment Template
You can buy trademark assignments online, but you should be cautious. I've had several clients show me "legal documents" that they have purchased online and the documents are often missing key terms.
Why is a Trademark Assignment Important?
If you are the owner of the mark and your application is not up to date, your trademark application might be rejected.
You might also lose ability to get notices which can result in missing deadlines.
Most importantly, you can potentially lose the ability to enforce your trademark against an infringing person or business.
Remember that a trademark is an extremely valuable asset for a business. A transfer must be done correctly to reduce unnecessary risks. An incorrect transfer can jeopardize your infringement exposure. Do it properly the first time. It can take a lot of effort and a lot more money to fix assignment changes, compared to properly updating the trademark database.
Please call me at (754) 800-4481 or book a consultation on my website if you'd like me to prepare a Trademark Assignment Agreement. I'd be happy to help customize a template for you AND give you a blank template to use in the future.