Since you likely worked so hard to obtain ownership rights over your trademark in the first place, it may be difficult for you to imagine a scenario where you would willingly surrender them. However, transferring ownership rights for business purposes is more common than you may initially realize. For example, you may be restructuring your business entity from a sole proprietorship to a limited liability company. Or, you may be licensing your brand to another party and allowing them to use your mark on their products and services. Lastly, you may be retiring or offloading some of your responsibilities after years of hard work, thereby selling your business or merging with another company. Nonetheless, please continue reading to learn whether you can transfer ownership of your trademark and how an experienced New Jersey trademark lawyer at The Ingber Law Firm can help you prepare the proper legal agreements.
How can I transfer ownership of my trademark?
Just like anything that has to do with intellectual property, there is a certain procedure to follow when transferring ownership of a registered mark. To begin with, you must confirm that you formally filed and registered your mark with the United States Patent and Trademark Office (USPTO). This is because USPTO registration allows you to transfer ownership via what is known as an “assignment.”
With this, you may draft a trademark assignment agreement. As the original owner or “assignor,” you may sign the bottom of this legal document, but simply stating the name of the new owner or “assignee” may be sufficient. You may then file this document, and other supporting documents and fees, with the Assignment Center at the USPTO. Hopefully, you may hear back from the USPTO within seven days. If this assignment is approved, you may proceed forward with updating your trademark records with the assignee’s information.
How can I prepare a trademark assignment agreement?
You must understand that the USPTO is not guaranteed to approve your petition for a trademark transfer of ownership. Rather, they will have to consider your trademark assignment agreement as having the appropriate information to be legally enforceable. What’s more, preparing this legal document correctly may save you from potential legal disputes down the line. Without further ado, this document should consist of the following content:
- A clear identification of the assignor’s and assignee’s names and addresses, along with other relevant personal information.
- A disclosure of the trademark registration number, a trademark’s description, and a trademark’s associated logos and symbols.
- A description of the scope of the transfer of ownership and whether or not this includes all associated rights and goodwill.
- A specific date for when the trademark transfer of ownership from the assignor to the assignee is supposed to take place.
- A statement on the payment types and amounts, and the dates for such compensation, that have already been agreed upon.
There is a lot to consider before pursuing a trademark transfer. To help you make the right considerations, please consult with a skilled Essex County, New Jersey intellectual property lawyer. Our team at The Ingber Law Firm will guide you toward the best decision.
