If you’re looking to transfer your trademark, then you’re right on the right page…
There are many instances when you would need to draft a Trademark Transfer Agreement, also known as a Trademark Assignment Agreement, to transfer a trademark.
A Trademark Assignment Agreement is commonly used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often needed when a product or company is being sold or purchased by another person or organization.
For instance, the trademark may be needed during a business acquisition or as part of a reorganization.
If you’re looking to get a Trademark Transfer Agreement drafted or reviewed, book your free call with a Trademark Strategy Advisor here.
Trademark Transfer 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 Agreement or Trademark Assignment Agreement.
If you need your Trademark Assignment Agreement drafted, book a call here.
A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, or design from the current owner to the future owner.
A trademark assignment agreement allows the owner to properly transfer the goodwill of a business to another party.
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 Document the Trademark Transfer with the Trademark Office?
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.
If you’re looking to get a Trademark Transfer Agreement drafted, book a call with a Trademark Strategy Advisor here.