The ownership of a trademark may change for various reasons and in different ways. A change in ownership may result from a contract, an assignment, a court decision, operation of law, such as an inheritance or bankruptcy, or from the merger of two companies.
The transfers of ownership may be temporary through licensing or permanent through assignment. Although changing trademark ownership is a complicated task, yet it can be easily solved though the help of legal consultants.
Transferring of a trademark includes two major steps:
Step 1: Transfer documents to related parties
It is important to specify the details of the trademark(s) to be transferred. Details such as terms and conditions regarding the transfer have to be mentioned in the transfer agreement. Everything including payment terms, transfer terms and information about the right granted should be mentioned in the agreement as well.
The trademark assignment should also include the transfer of goodwill associated with the marks.
In cases where multiple marks are involved, a single trademark assignment may include a schedule that lists all the trademarks to be transferred.
The agreement should also mention that previous owner is granting all the ownership rights of the trademark to the new person who has acquired the company.
Step 2: Inform the trademark office MOE of ownership transfer
The owner of the trademark required to record the transaction with the trademark office anytime the owner assigns a federally registered trademark.
MOE has a simple procedure to record assignment. The owner of the trademark is required to fill out the form and submit a copy of the executed transfer agreement in order to complete the assignment process. The process will not take more than a day for completion. Make sure to pay the fees for completing the process timely.
If you fail to handle the document correctly and accurately, you may land into a number of disputes and consequences in case of disagreements. That is why you must make sure that each aspect of transfer is being handled in a proper legal way.
The transfer of ownership of an unregistered mark must be accompanied by the goodwill associated with the mark. The goodwill of a trademark represents the reputation that the mark has generated with the customers and the earnings power through brand value. If goodwill is not transferred, the change of ownership is deemed ineffective and the trademark may be abandoned.
The new trademark owner should be diligent in tracking any deadline for responding to outstanding actions and renewing any registered marks. Typically, this can be forwarded to any trademark specialist who will easily track all the deadlines of transferred trademark filings.
If the owner of the trademark fails to properly transfer the ownership of a trademarks then If may end up into the dispute regarding the transfer of ownership of trademark.
If you purchase the rights and interest to a trademark and never properly record the transfer with the MOE, then you may end up in a battle over ownership with the prior owner of the trademark. The prior owner will still remain as the original owner of the trademark until the transfer is recorded with the MOE.
Take a note: remember to transfer ownership of your state trademark as well.
Change of trademark ownership is complicated and involves dozens of legal decisions to make for a proper transfer. If you are interested in learning more about changing the trademark ownership and infringement issues associated with not properly recording the transfer, you can contact any experienced trademark attorney who can help counsel clients to avoid errors that could cost the trademark owner.
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