Joshua Julien Brouard
13 September 2023 • 3 min read
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You're probably here for one of two reasons:
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:
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.
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.
Within your trademark assignment agreement, if you do insist on doing it on your own, you should include the following:
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.
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.
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:
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:
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).
Yes, the trademark transfer process provides for a way to transfer ownership of a mark. And a trademark assignment form should be filed with the USPTO to do this. However, this is best completed with the legal assistance of a qualified trademark attorney.
It depends on whether you'd like to have a license over the rights of the trademark or to own it outright. For the latter, you can pay the trademark owner to assign it to you. To license a trademark, you'll have to complete a licensing agreement.
Trademark ownership transfer, otherwise known as assignment, starts at $279. But feel free to contact us at customer.servic[email protected] if you’d like more specific information.
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Joshua Julien Brouard
Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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