transferring trademark

Trademark Ownership Transfer through a Trademark Assignment Registered with USPTO

  • 03 April, 2024
  • Nyall Engfield

Trademark Ownership Transfer through a Trademark Assignment

Trademark ownership transfer is a significant process within the realm of intellectual property law, ensuring that the rights to a trademark can be officially passed from one party to another.

The United States Patent and Trademark Office (USPTO) oversees this process, which involves the submission of a registered assignment and official fee, and possibly a request under Section 7 to update the registration records. Once the trademark assignment is successfully registered the Registrant receives a Notice of Recordation from the USPTO to attest to the transfer.

Value of Trademarks

A trademark is worth essentially the goodwill that accrues to a brand based on the recurring customers who know the brand. Amazon is the tenth most valuable brand in the world with a value of $37.9 billion. As of April 2017, Apple's brand value was $107 billion. Google has surpassed Apple as the most valuable global brand. It is estimated that Google's trademark portfolio has a value of $44.3 billion, the most of any portfolio in the world.

The Essence of Trademark Ownership Transfer

A trademark serves as a unique identifier, distinguishing the goods or services of one entity from those of another. As such, the ownership of a trademark is a valuable asset, often representing significant brand equity, and can be transferred for consideration (bought and sold).

Transferring ownership of a trademark, therefore, involves transferring all rights, titles, and interests in the mark from the assignor (the current owner) to the assignee (the new owner). A trademark owner can also transfer ownership through an assignment, which must be in writing.

An individual or a business entity, whether incorporated or unincorporated, can own a trademark Yedi, Inc. v. Universal Connect Wholesale, LLC, 2022 U.S. Dist. LEXIS 153598. If the corporation or company is invalid for failure to file documents or take actions to keep the company in compliance, the transfer is invalid since the new owner cannot take over the rights.

When a trademark is transferred or assigned, the assignee then stands in the shoes of the assignor, succeeding to all of the assignor's rights and obligations in connection with the assigned trademark. However, a trademark owner may not use a partial trademark assignment to impose geographical restrictions on another's use of a trademark.

Trademark assignments are required because a trademark is a symbol of goodwill, and has no independent significance apart from the goodwill it symbolizes. Therefore, the law requires that goodwill always go with the trademark. There are no rights in a trademark alone, and no rights can be transferred apart from the business with which the mark has been associated Iskenderian v. Iskenderian, 144 Cal. App. 4th 1162.

Goodwill associated with a trademark represents the intangible value that accrues over time from the positive perception of a brand by consumers. This goodwill embodies the trust, recognition, and reputation that a business has developed through consistent and positive consumer experiences with its products or services linked to the trademark. Essentially, it’s the premium that a company enjoys in the marketplace due to the favorable public recognition of a trademark. Goodwill is crucial as it often leads to repeat customers, brand loyalty, and the ability to command higher prices. It also significantly influences business valuations during sales or mergers, as a well-recognized trademark can carry substantial goodwill, enhancing the overall worth of a company.

The purpose of a trademark is to identify a good or service to the consumer, and identity implies consistency and a correlative duty to make sure that the good or service really is of consistent quality, i.e., really is the same good or service. Therefore, federal trademark law generally bans assignment of trademark licenses absent the licensor's consent because, in order to ensure that all products bearing its trademark of uniform quality, the identity of the licensee is crucially important to the licensor In re Rupari Holding Corp., 573 B.R. 111.

Registered Assignment with the USPTO

For a trademark ownership transfer to be recognized legally, a registered assignment must be filed with the USPTO. This assignment is a document that details the transfer of rights and is crucial for ensuring that the USPTO's records accurately reflect the current owner.

The assignment must be dated and include the names and addresses of both the assignor and assignee, a clear identification of the trademark being transferred, and a statement transferring all rights in the trademark to the assignee. Importantly, the assignment must be executed by the assignor, indicating their intention to transfer ownership.

In addition, the USPTO has regulations that reflect an expectation that assignments will be clearly stated in writing, and the assigned marks identified with specificity. To register a trademark assignment, the USPTO requires that the assignee submit a cover sheet with information including each trademark registration number and each trademark application number or a copy of the application or a reproduction of the trademark Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd., 726 F.3d 62.

The legal basis for trademark assignments is established in 15 USCS § 1060, which states that a registered mark or a mark for which an application to register has been filed can be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark. Assignments must be in writing and "duly executed," and recordation with the USPTO is prima facie evidence that the assignment was executed.

Recording a trademark assignment with the USPTO is not required to effectuate the assignment, but it is recommended for several reasons. First, it provides prima facie evidence of the execution of the trademark assignment. Second, it gives constructive notice to others about the ownership of the transferred trademark, preventing claims of ignorance of the new ownership as a defense to trademark infringement. Third, it ensures that the USPTO's records reflect the current owner of the trademark, which is important when a third party petitions to cancel a trademark registration. If the USPTO's records do not reflect the current owner and the proper owner does not receive and respond to the petition, the USPTO may cancel the registration. Lastly, recording a trademark assignment ensures a proper chain of title, which is helpful when renewing a trademark registration

Section 7: Updating Trademark Registrations

Once the trademark assignment is recorded, the new owner may need to update the trademark registration to reflect the change in ownership. This is where Section 7 of the Trademark Act comes into play. Under Section 7, the assignee can file a request with the USPTO to amend the registration record, ensuring it accurately represents the current owner. Otherwise, the Register won't be updated until the next renewal under Section 8 or Section 9.

A Section 7 declaration is used to amend or correct a trademark registration after it has been issued. It allows a registration to be immaterially amended or "changed" in several ways. These include changes to the registrant's information, such as address, clerical correction of the registrant's name, entity type, and/or domicile. It also allows for changes to any information statement contained in the registration, such as dates of first use or certification statement. The actual mark that is the subject of the registration can also be amended, provided that the change to the mark is "immaterial" and does not change the commercial impression of the original mark. Lastly, changes can be made to the goods or services listed in the registration, but only if the change limits or reduces the listed goods/services.

This request is crucial for several reasons. Firstly, it ensures that all correspondence and legal notices from the USPTO are directed to the correct entity. Secondly, it is essential for maintaining the legal protections afforded by registration, as any renewal or maintenance filings must be made by the registered owner. Finally, it provides public notice of the current owner, which is important for enforcement and licensing purposes.

The Legal Implications of Ownership Transfer

The transfer of trademark ownership has significant legal implications. The trademark assignee inherits not only the rights associated with the trademark but also any existing limitations or encumbrances. This includes any prior licenses granted, pending litigation, or claims of infringement. Therefore, due diligence is crucial before the transfer, ensuring that the assignee is fully informed of the trademark's legal standing.

Moreover, the transfer of ownership can impact the strength and enforceability of the trademark. For instance, if the transfer is not properly recorded, the new owner may face challenges in enforcing the trademark rights against infringers. Additionally, any gap in the use of the trademark or failure to maintain registration can jeopardize the trademark's status.

Strategic Considerations

From a strategic standpoint, the transfer of trademark ownership should be considered in the context of broader business objectives. For businesses acquiring trademarks, the transfer is often part of a larger acquisition or merger, contributing to the expansion of the brand portfolio. For individual entrepreneurs or small businesses, selling a trademark may provide capital for other ventures or signify a strategic pivot.

Regardless of the motive, the transfer process requires careful planning and consideration of timing, particularly in relation to renewal deadlines and any pending applications or disputes. Engaging a trademark attorney can help navigate the complexities of the process, ensuring compliance with legal requirements and safeguarding the trademark's value.

Overall, the transfer of trademark ownership is a nuanced process that requires careful attention to legal details and procedural requirements. By ensuring that a registered assignment is properly filed with the USPTO and that the registration records are updated under Section 7, parties can effectively transfer trademarks while preserving their legal protections and value.

This process not only reflects changes in business ownership and strategy but also ensures that the trademark continues to serve its fundamental purpose: to protect consumers and the integrity of the marketplace by clearly identifying the source of goods and services. As trademarks are often among a company's most valuable assets, understanding and correctly executing their transfer is crucial for both assignors and assignees in maintaining the strength and efficacy of these key intellectual property rights.

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