Transferring Trademark Ownership: What You Need to Know
I’m a Trademark Attorney based right here in Westminster, California. I help people protect their brands, and one of the most common things I get asked about is transferring trademark ownership. That might sound complicated, but don’t worry—I’m here to break it down for you in simple, everyday language.
Whether you’re selling your business, changing your company’s structure, or handing over your brand to someone else, it’s important to understand how trademark ownership works and how to transfer it the right way.
Let’s get into it.
What Is a Trademark?
Before we talk about transferring ownership, let’s make sure we’re on the same page about what a trademark is. A trademark is something that makes your business stand out—like your brand name, logo, slogan, or even a specific sound or color that people connect with your business.
Think of it like your business’s signature. It tells customers who you are and helps them trust your products or services.
Why Would You Transfer a Trademark?
There are lots of reasons why someone might want to transfer a trademark. Here are a few common ones:
-
Selling your business: If you're selling your company, you’ll usually transfer the trademark to the new owner.
-
Changing business partners: Maybe you and a partner are going separate ways. One of you might keep the trademark.
-
Merging with another company: If two companies become one, the trademarks might need to be moved to the new business.
-
Gift or inheritance: Sometimes trademarks are passed down to family members or given to someone else.
No matter the reason, you want to make sure the transfer is done legally and correctly.
What Is a Trademark Assignment?
When we talk about transferring a trademark, we usually use the word assignment. A trademark assignment is a legal document that says you’re handing over ownership of a trademark to someone else. It's like a bill of sale, but for a brand.
This document should include:
-
The name of the current owner (that could be you or your company)
-
The name of the new owner
-
A clear description of the trademark being transferred
-
The date of the transfer
-
Signatures from both parties
Once this form is signed, the new owner becomes the official holder of the trademark. But you also need to record the assignment with the United States Patent and Trademark Office (USPTO) so it's officially on the record.
Why Is It Important to Record the Transfer?
Some people think it’s enough to just sign a private agreement, but that’s not true. If you don’t tell the USPTO, the trademark database won’t show the new owner. That can cause problems down the line.
For example:
-
The new owner might not be able to enforce the trademark in court.
-
It can delay the process of renewing the trademark.
-
If there’s a dispute, it might be unclear who actually owns the rights.
Recording the transfer makes everything official. It protects the new owner and keeps everything legal.
What If You’re Transferring a Trademark as Part of a Business Sale?
This happens a lot. If you're selling your business, the trademark usually comes with it. In that case, make sure your business sale agreement clearly says the trademark is being transferred. Then, you still need to file a separate trademark assignment with the USPTO.
A lot of people forget this step—but it’s important. Just because you sold the business doesn’t mean the trademark transfer is complete. You still need that official assignment.
Can You Transfer an "Intent-to-Use" Trademark?
This is a question I get asked a lot. An intent-to-use trademark is one that hasn’t been used in business yet, but the owner plans to use it soon. These can be tricky.
You can transfer an intent-to-use trademark, but only under special rules. The USPTO says you can only assign it if it’s part of a business deal or if the whole business is being transferred.
If you're not sure, it’s best to talk to an attorney (like me!) before making any moves.
Mistakes to Avoid
Let’s talk about a few common mistakes I’ve seen people make when transferring trademarks:
-
Not using a written agreement: Always get it in writing. A handshake or email isn’t enough.
-
Forgetting to record with the USPTO: Like I said before, this is key.
-
Not describing the trademark clearly: Use the registration number and a clear description to avoid confusion.
-
Leaving out important business details: If the trademark is tied to certain products or services, make sure that’s in the agreement too.
These mistakes might seem small, but they can cause big problems later.
What Happens After the Transfer?
Once the trademark is transferred and recorded, the new owner takes over. They can:
-
Use the trademark in their business
-
License it to others
-
Renew the registration
-
Enforce their rights if someone else uses it without permission
It’s a big responsibility, and it comes with important rights. That’s why making sure the transfer is done right is so important.
Do You Need a Lawyer to Transfer a Trademark?
Technically, you don’t have to hire a lawyer—but having one can make a huge difference. Trademarks are legal property, and the transfer process can be more complicated than it looks.
As a Trademark Attorney, I’ve helped many people in Westminster and beyond avoid costly mistakes. I can help you draft the assignment, make sure it follows all the rules, and file it properly with the USPTO. That way, you can rest easy knowing everything’s taken care of.
Final Thoughts
Transferring a trademark might not sound exciting, but it’s a very important step when you’re changing ownership. Whether you're selling your business, passing it to a family member, or making changes to your company, you want to make sure your trademark transfer is legal, clear, and official.
If you have questions or need help with a trademark transfer, feel free to reach out. I’m always happy to help fellow business owners here in Westminster and beyond protect what they’ve built.
Comments
Post a Comment