Trademark Ownership Transfer: How Does it Work?

You're probably here for one of two reasons:

1. You want to acquire ownership of an existing mark.
2. You want to transfer ownership of your mark to someone else

I'll take you through exactly how you can do both in this article. I’ll be going over the process, and any other relevant information surrounding trademark ownership transfer.
Let’s get started:

What's the process of transferring trademark ownership?

Let's start by understanding the process of trademark transfers. To do this, a trademark assignment has to be completed and recorded with the USPTO.

Typically, this would require a signature from the assignor but not the new owner. Now, you can change trademark ownership without the assistance of a trademark attorney. However, we strongly recommend that you refrain from pursuing this course of action.

(Self-advertising warning)

Our trademark attorneys have been through the process of transferring ownership many times and thus can ensure that the transfer goes smoothly. Trademark law is complex, so it's always best to leave it with the professionals when you're dealing with any legal issues.

And while your trademark assignment fees may be a bit higher with an attorney, in the long run, the avoidance of potential mistakes can save you both time and money.

What should be included in the USPTO trademark assignment?

Within your trademark assignment agreement, if you do insist on doing it on your own, you should include the following:

• The particulars of the assignee, primarily their name (or if a business, entity type, and state of incorporation) and address.
• The particulars of the trademark application/s that are to be transferred.
• Expression of the transfer of goodwill that relates to the trademark/s.

Failure to provide correct or sufficient detail to the Trademark Office will result in the failure to transfer trademark ownership successfully.

Take Note: A business' name change does not require a trademark assignment. However, what is needed in this case is a record of the changed name with the USPTO.

Is there anything the new owner should do?

While your attorney would typically do this, if you don't have one, then it's advisable that you carefully and quickly respond to Office Actions (if any) and attend to trademarks that need to be renewed.

Trademarks put under question or not being renewed may be removed from the database and lose federal protection entirely.

In addition, the new trademark owner, once the process is complete, must use the trademark for the relevant goods or services mentioned in the trademark filing.

What if I want to license a trademark?

It's important to note that licensing a trademark is different from trademark assignment. You see, someone may purchase a trademark, and then the assignor can complete a trademark assignment with the USPTO to seal the deal.

However, for licensing, no trademark transfer agreement needs to be completed. In this case, a licensing agreement must be completed that stipulates the particular rights the assignee will have over the marks. It stipulates:

• how they can use it
• where they can use it
• what they can use it for
• And various other particulars

Can you transfer ownership of intent to use (ITU) trademarks?

Regarding trademark registration, intent to use trademarks aren't considered transferable. This is because the Trademark Office wants to see that the mark has been used before it can even be transferred.

Although there are certain circumstances where exceptions can be made, this is a safe hard-and-fast rule. To understand the specifics and if your business may be that exception, it's best to consult with a trademark attorney.

And for your benefit, here’s a little bit more information about intent to use applications:

Take your time, consult a professional, and understand your options

Regarding intellectual property, it's important not to rush, mainly if you've decided to go through the struggle of dealing with trademark assignments solo. However, I'd like to re-emphasize that consulting a law firm to transfer trademark rights is highly advisable (if only for peace of mind, however there are many benefits).

Finally, you should understand that while trademark assignments are a great option, they're not your only option. Trademarks don't need a new owner to be used.

Sometimes, even a licensing agreement is sufficient to meet someone's needs (and can earn you some good money in the process).