Can I Change the Owner of My Trademark?

If you have a registered trademark, you may wonder if you can change the owner of your mark. The answer is yes, you can. However, there are some steps and requirements that you need to follow to make sure that the change of ownership is valid and effective.

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If you have a registered trademark, you may wonder if you can change the owner of your mark. The answer is yes, you can. However, there are some steps and requirements that you need to follow to make sure that the change of ownership is valid and effective.

What is a trademark assignment?

A trademark assignment is a legal process of transferring the ownership of a trademark from one person or entity (the assignor) to another person or entity (the assignee). A trademark assignment can be done for various reasons, such as selling a business, merging with another company, or restructuring a corporate entity.

A trademark assignment must include the transfer of the goodwill associated with the mark. Goodwill is the intangible value that the mark has in the market, based on its reputation and recognition among consumers. If a trademark assignment does not include the goodwill, it is considered an invalid assignment in gross, which means that the assignee does not acquire any rights or benefits from the mark.

What are the requirements for a trademark assignment?

To change the owner of your trademark, you need to have a written trademark assignment agreement that clearly states the terms and conditions of the transfer. The agreement should include:

  • The names and addresses of the assignor and the assignee

  • The description and registration number of the mark

  • The consideration or payment for the transfer

  • The effective date of the transfer

  • The signature of both parties

You should consult with a trademark attorney to confirm the specific.

How do I record a trademark assignment?

After you have executed a trademark assignment agreement, you need to record it with the relevant trademark office or authority. This is important to update the public record and avoid any confusion or disputes over the ownership of your mark. Recording a trademark assignment may also affect your ability to enforce your rights and register new similar marks.

The process and cost of recording a trademark assignment vary depending on the jurisdiction. In some countries, you can record an assignment online through an electronic system. In others, you may need to submit paper documents by mail or in person. You may also need to pay fees for filing and publication.

You should record a trademark assignment as soon as possible after the transfer. Some countries have deadlines or penalties for late recordals. You should also keep copies of all documents related to your trademark assignment for future reference.

What if I am creating a new entity to be the owner of my trademark?

Sometimes, you may want to change the owner of your trademark without selling or transferring it to another party. For example, you may want to create a new entity, such as a corporation or a limited liability company, to be the owner of your mark. This can be done for tax, liability, or strategic reasons.

In this case, you still need to follow the same steps and requirements as a regular trademark assignment. You need to have a written agreement that transfers your mark and its goodwill from yourself (as an individual) to your new entity (as a legal person). You also need to record this agreement with the relevant trademark office or authority.

However, there is one difference: since you are both the assignor and the assignee, you will be signing the agreement twice, once for each role. You should make sure that your signature clearly indicates which capacity you are acting in each time. For example, you can write “John Smith as Assignor” and “John Smith as President of ABC Inc. as Assignee” next to your signature.

Conclusion

Changing the owner of your trademark is possible, but it requires careful planning and execution. You need to have a valid trademark assignment agreement that includes the goodwill of your mark. You also need to record this agreement with each jurisdiction where your mark is registered.

If you need help with changing the owner of your trademark, contact us for a free consultation to discuss your needs.