There are many good reasons to think about transferring trademark ownership. Maybe you have sold an idea to someone else, or perhaps you are retiring and have no more need for whatever intellectual property helped you get to that point. Whatever your reason for transferring your IP to someone else may be, you want to make sure that this process is handled correctly. An Orange County, California trademark lawyer can help you with this.
What’s the Process For Transferring Trademark Ownership?
Transferring trademark ownership requires you to fill out assignment documents and send them to the United States Patent and Trade Office. The USPTO can then evaluate your paperwork and make sure that the trademarks are transferred correctly to a new party, for a small fee.
If you want to save money and transfer multiple trademarks at once, that is a possibility. The first trademark transfer is $40. Any other requests filed at the same time can be taken care of for $25 each.
Is Transferring Trademark Ownership Necessary If I Change the Name of My Company?
Not necessarily. However, you have to be careful about exactly what you mean here. Are you just changing a company name or are you changing over to an entirely different business entity?
As an example, let’s say that you have an LLC. You change the name of that LLC. There’s no need to transfer trademark ownership, but you would have to update the USPTO about the name of the trademark owner, even though the owner is technically staying the same.
On the other hand, if you have an LLC and decide to establish a corporation, then you would have to make sure that your trademarks are properly transferred. This is a new business entity after all.
What Should the New Owners of a Trademark Be Aware Of During This Process?
If you are transferring trademark ownership to a new person and not just your own new business entity, the party receiving your trademark should be aware of any important renewal deadlines. Trademark registrations do not last forever. If you decide to transfer a trademark to someone else when the renewal deadline is coming up, both parties should be aware of this.
Are There Any Other Complications to Be Aware Of?
Some other potential pitfalls and complexities could rear their heads when you are transferring trademark ownership. An international trademark, like one filed using the Madrid Protocol, will likely require extra work to transfer. Intent-to-use trademark applications can also be more complicated when intellectual property is being assigned or transferred to someone else.
Contact Our Law Firm
If you want to avoid headaches and legal issues, an experienced trademark attorney can help. Contact Burns Patent Law and tell us more about what you plan to do with your trademarks. We’ll help you safely transfer your IP and deal with all of the necessary paperwork.
