There are a number of reasons why a business owner may want to transfer ownership of a federally registered Trademark, or rather to acquire the ownership of a trademark. For instance, the trademarks may be needed during a business acquisition or as part of a reorganization. This post will discuss how you can be able to transfer the ownership of a trademark, and why you should make sure that the trademarks are transferred correctly.
Documentation of the trademark by a Transfer Assignment Agreement
The transfer process of a particular trademark includes two major processes;
• Documentation of the transfer between the parties
• Documenting the transfer with the US Patent and Trademark Office (USPTO)
Before you get to document the transfer of the trademark with the USPTO office, you will need to draft a trademark transfer or an assignment agreement. Make sure you consult your attorney on how best to draft the document, to ensure a safe transition. In case you do not have a lawyer, you can look to hire an experienced Lawyer to ensure your transfer is done properly and within the law.
The trademark transfer agreement lays out the terms of the transfer that will include the terms of payment, and the rights that are to be assigned, the USPTO registration number of the particular trademark, and any other registration warranties from the current owner that are to be passed over to the new owner so that they can own all the rights of the trademark, and have total authority to transfer the mark.
Therefore, to be able to move forward with the transfer ownership of the registered trademark with the USPTO, you will be required to have a signed trademark transfer agreement.
How do I file the Agreement with the USPTO?
The owner of the trademark that is to be transferred is required by law to record the transaction with the USPTO any time the owner assigns a federally registered trademark. Luckily enough the USPTO has a simple online form that can be used in the recording of the assignment.
The owner will be required to fill out the form and then later submit a copy of the executed transfer agreement in order to complete the assignment process. This particular file is usually processed within one business day in case it is filed online. You will also have to pay a $40 filing fee for the process of recording the trademark assignment.
There is another option where the owner can file the paper version of the online form, however, for purposes of speedy processes most businesses prefer the online method. The paper-filed assignment normally takes up to one week to be processed, compared to one business day for online filings.
Why do I need to transfer my trademark correctly?
In case you fail to properly transfer the ownership of the trademark, and the individual company or business that you sell your right to does something with the trademark that will infringe on another trademark, then because technically you stand as the owner of the trademark (to the USPTO at least), you are likely to get roped into the ensuing dispute.
That is why, as much as this particular process might seem simple, and most entrepreneurs will want to take a rain check on a lawyer, it might actually be a smarter move to involve a lawyer throughout the process.
However, on the flip side, in case you purchase the rights to a particular trademark and the company or business that sold you the rights to did not properly record and transfer the agreement with the USPTO, then you may end up in an ownership battle with the previous owner, since they still technically own the trademark. It’s always a wise idea, to seek the advice of an attorney while making a transfer.
Need a Lawyer to transfer your Trademark? Sam Mollaei, Esq., business lawyer, can be reached by email [email protected]
Mollaei Law is a law firm specializing in business law serving businesses and entrepreneurs. We provide legal expertise in all stages of business development by drafting and reviewing contracts and agreements, assisting transactions and negotiating, forming LLC’s and Corporations, registering trademarks and copyrights, business planning, and answering any legal questions you may have about your business.