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Archives For June 2015

How to Assign Ownership of a Trademark Registration

June 25, 2015 — Leave a comment

Trademark rights stem from use of a mark in commerce, meaning you cannot own a trademark registration unless you are actually using the mark in commerce (but be sure to check out our post on intent to use applications).

As a result, you cannot simply assign ownership of a trademark unless you are also assigning the goodwill associated with that mark and the new owner continues selling the same or similar goods and services.

This post will explain how to assign a registration to a new owner and how to change your name with the USPTO if your business name changes.

Timing

The ability to assign your trademark rights depends on where your mark is in the application process.

If you have a registration, or an application based on actual use, you can request an assignment through the USPTO. However, if your application is not yet registered and is based on intent to use, then you cannot request an assignment.

Process

The first step to recording an assignment is to file a Recordation Form Cover Sheet, along with supporting documentation. That supporting documentation is most often some form of trademark assignment contract or certification (more on this below).

You file the form and supporting document through the Electronic Trademark Assignment System (ETAS) along with the corresponding fee, currently $25.

Supporting Documentation

Depending on the circumstances of the assignment, your supporting documentation may take several different forms. The most common is a simple trademark assignment agreement between the two parties. The agreement should state that the assigning party is giving up its rights in and to the mark and that all trademark rights are being assigned to the receiving party. Further, the document should state that the associated goodwill is being assigned in addition to the trademark itself. This is because a trademark cannot be assigned without the corresponding goodwill.

Name Change

You may be wondering what to do if you are not actually assigning your mark, but just changing the name of the owner. In such a case, you actually follow the same procedure as outlined above. However, rather than using supporting documents showing the assignment, you just file documents supporting the name change (such as a filing with your state’s secretary of state).

Your Options

While you can file the Recordation Form Cover Sheet on your own, the supporting document is usually more complicated. To make sure you draft the proper supporting document, it is usually best to involve an attorney with making these changes to your pending application or existing registration.

If you would like help with your assignment or name change, feel free to contact us anytime to learn how we can help.

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Image: Thinkstock/moodboard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law ,
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Learn About Competitors Using the Trademark Status and Document Retrieval Service

June 10, 2015 — Leave a comment

A little known fact about the USPTO trademark database is that you can use it to dig up information about your competitors.

Here’s how.

First, run a search.

Using the USPTO’s search tool, you can search for trademarks similar to yours, names of applicants/competitors, and other search terms. Then, skim through the results to see if anything looks relevant. However, unlike when you search for potential trademark conflicts, in this case you want to look for “live” and “dead” marks. This is because we are trying to learn about your competitors, not so much about the marks themselves.

Second, enter the TSDR.

Once you have pulled up an application or registration, click on “TSDR” in the upper right corner.

The initial page will give you a summary of the registration or application. This can be helpful, but the next step is better. Click on the “Documents” tab at the top of the page to reveal all of the records relevant to that registration/application.

Third, dig!

The documents in this tab contain all kinds of information that might be useful to you.

You can learn about whether your competitors are using an attorney to handle their application by looking at the correspondence information. You can learn whether your competitor was denied in the application process and how they responded to the same. You can also review the specimens and evidence of use which they provided the USPTO to obtain a registration, which may provide useful information to you in terms of what they are selling and how they are marketing their goods/services.

You may also accidentally stumble on another party that objected to your competitor’s application. If you see that, then you can dig further to see what marks they own or claim to own and what arguments they made against your competitor’s application.

Next Steps

Then, after you have dug up all of this useful information, you can use it in several ways. You can use it to better prepare your own application and you can use it to improve your marketing strategies once you learn what your competitors or doing or are planning on doing.

And if you need help reviewing these documents, you can always seek the advice of a trademark attorney.

Sign Up

If you find these tips useful, be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues

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Image: Thinkstock/moodboard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , ,
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