How Do I Transfer Ownership of a Trademark?

Trademarks hold significant value, as they represent your brand, your identity, and sometimes even your reputation. That said, if you’re selling your business, rebranding, or simply need to shift ownership for strategic reasons, you should continue reading to learn more about how to properly transfer ownership of a trademark.

What Are the Initial Steps to Transfer a Trademark?

Transferring a trademark, legally known as “assignment,” begins with understanding the nature of the trademark and ensuring it is registered or at the bare minimum, an Application for the trademark has been filed. The first step is to confirm that your trademark is, indeed, registered or a U.S. Trademark Application for your trademark has been filed with the United States Patent and Trademark Office (USPTO). A registered trademark provides legal protection and makes the transfer process more straightforward, however, ownership of a U.S. Trademark Application filed with the USPTO is also able to be transferred via “assignment.”

Once confirmed, the next step is to draft an assignment agreement. This legal document will outline the terms of the transfer, including the names of the assignor (current owner) and assignee (new owner), the specific trademark being transferred, and any associated goodwill. Goodwill refers to the value of the brand’s reputation and customer loyalty that is inherently linked to the trademark.

How Do I Draft a Trademark Assignment Agreement?

A trademark assignment agreement should only be drafted with knowledgeable legal counsel, as this is a crucial document. It should clearly state all relevant details to avoid any future disputes. Essential elements of a trademark assignment agreement are as follows:

• Identification of Parties: Clearly state the names and addresses of both the assignor and assignee.
• Details of the Trademark: Include the registration number or application number, description, and any associated logos or symbols.
• Scope of Transfer: Specify whether the transfer includes all associated rights and goodwill.
• Effective Date: Clearly state when the transfer will take effect.
• Consideration: Detail any payment or compensation involved in the transfer.

After drafting, both parties should thoroughly review the agreement. It’s often wise to have a New Orleans, Louisiana trademark lawyer review the document to ensure all legal requirements are met.

What Is the Filing Process for a Trademark Assignment?

Once the assignment agreement is signed by both parties, the next step is to file the assignment with the USPTO. This process involves submitting the necessary forms and paying the required fees, and is outlined below:

1. Complete the USPTO Assignment Recordation Form: This form, known as the Recordation Cover Sheet, captures the essential details of the transfer.
2. Attach the Assignment Agreement: Include a copy of the signed assignment agreement with your submission.
3. Pay the Filing Fee: The USPTO requires a fee for recording the assignment, which can be paid online through their Electronic Trademark Assignment System (ETAS).

The USPTO will review the submission, and if everything is in order, they will record the assignment. You should monitor the status of your filing and ensure that the USPTO updates its records accordingly.

Are There Additional Considerations for Transferring a Trademark in Louisiana?

While the federal registration process is paramount, local regulations in Louisiana may also impact the transfer. It’s advisable to check with the Louisiana Secretary of State’s office to see if any state-level filings are necessary. Additionally, Louisiana has specific rules regarding the sale of business assets, which may encompass trademarks. Ensuring compliance with both federal and state regulations will help ensure a seamless transfer.

If you have further questions or are considering transferring ownership of your trademark, please don’t hesitate to contact Lemler IP today.