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.
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.
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.
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.
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).
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.
*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.