TMIN: Assignments and Ownership Changes


Part 15 of Trademark Information Network Series

Published on Apr 20, 2017

This video provides an overview of three of the most common types of assignments and ownership changes: (1) change in entity name; (2) change in entity type; and (3) assignment of the trademark from one party to another. In this video, you will learn what these changes are, how to record them with the USPTO, and why it’s so important to keep your ownership information up-to-date. WARNING: A failure to properly record your ownership information may result in an inability to use and protect your trademark.


 

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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Did your business change its name? Change its entity type? Has the ownership of your trademark changed hands? If so, and you have a live federal trademark application or registration, you must tell the USPTO about these ownership changes. If you're not sure how to go about that, stay tuned. We'll let you know what three of the most common types of changes are, how to record these changes with the USPTO, and why it's so important to keep your ownership information up-to-date.

So, what exactly is an "ownership change." Simply put, it involves any modification of the legal entity that owns the trademark application or registration.

It might be a simple change, such as a change in the owner's name or entity type, or it might be a little more complex, like an assignment through the sale of an entire business. Let's take a look at three of the most common types of changes.

Change in name. Here, the owner of the trademark stays the same, but the owner's name changes. For example, say Jane Smith owned a particular trademark registration. Later on, she married and legally changed her name to Jane Doe. Jane must update the USPTO records for her registration to reflect her new legal name.

Change in entity type. Here, the owner stays the same, but the type of entity changes. For example, say XYZ Incorporated owned a particular trademark application, but during the registration process re-formed the business as a limited liability company (XYZ, LLC). Notice, not only did XYZ change its entity type, it also changed its name. The company now must update the USPTO records to indicate the owner is XYZ, LLC.

Assignment of the trademark. Here, one party transfers, sells, or assigns its trademark rights to another person or business, so the owner of the mark changes. For example, say Jane Doe sold her company (along with its federally registered trademark) to XYZ, LLC. This transfer of ownership is called an assignment. XYZ must record this assignment with the USPTO so that the USPTO registration record accurately reflects that XYZ, LLC is the new owner of the mark that Jane Doe previously owned.

There are many other types of changes of ownership that can occur, but, again, these three are some of the most common: Change in Name, Change in Entity Type, and Assignment.

Now that you know what types of changes require notification, how do you submit the information. Like most filings at the USPTO, the quickest and easiest method is to file electronically through USPTO.GOV.

Specifically, use the Electronic Trademark Assignment System (or ETAS, E-T-A-S). ETAS allows you to do everything on-line that relates to recording ownership changes in your trademark application or registration.

Simply choose the appropriate ownership change from those listed on the ETAS page. For example, it might be an Assignment, a change of name, or a change in entity type (called an Entity Conversion).

As required by your selection, you will fill out the remainder of the form explaining the nature of the change in ownership, upload the document that evidences the change in ownership (if one is required), and pay the required filing fee.

Regarding the type of supporting document you might need to provide, it depends on state law, but it is typically a copy of the original legal document that changed the entity type or transferred ownership of the mark, an excerpt from the same document, or a statement signed by both parties, describing the change of ownership.

If you are merely submitting a Change of Name form, however, you do not need to submit a supporting document. You only need to fill out the online form and the pay the required fee.

And as to the filing fee for all of these forms, it's $40 for the first trademark listed on the form and $25 per trademark for any additional marks listed in the same filing.

And that's it. Just fill out the on-line form, attach any necessary documents, and pay the required fee. But even though filing the information is simple, there is one more thing to do.

Check the on-line Trademark Status and Document Retrieval system (known as T-S-D-R) to make sure that your trademark application or registration records reflect the new ownership information. Merely filing your change does not automatically update the USPTO database in all cases. So, use TSDR to see what documents were filed and to verify that the correct ownership information has been recorded.

If you filed your form and paid your fee, but the ownership information has not been updated in the USPTO database, you must notify the Office. How you do so depends on where you are in the registration process. So, be sure to check out the relevant Practice Tip in the Trademarks section of USPTO.GOV for the proper procedure.

And also be sure that your correspondence information is up-to-date. Sometimes the owner and the point of contact are not the same.

To ensure that the USPTO can contact you, update your mailing address, telephone number, and email address using the Trademark Electronic Application System (or TEAS, T-E-A-S) Change of Correspondence Address form. This form is available through USPTO.GOV.

If you run into trouble or are unsure what to do, call the Trademark Assistance Center for help: 1-800-786-9199. Or, if you have specific questions about filing your assignment or change of ownership, contact the Assignment Recordation Branch at 571-272-3350.

It is your responsibility to ensure that the database contains the correct ownership information for your trademark, so use TSDR to regularly check the status of your application or registration.

And, finally, why is it so important to keep your ownership information up-to-date? Without it, you could lose control of your trademark.

Specifically, if you are the owner of the mark and your information is not up-to-date, your application may be refused by a USPTO examining attorney. In addition, you might not receive important USPTO notices and communications. You might lose the ability to timely respond to those notices and submit amendments to your application.

Once your mark is registered, you might lose the ability to file necessary registration maintenance documents, use the registration as a basis for filing a foreign trademark application, and, most importantly, you might lose the ability to prove to infringing users in court that you are the true owner of the mark.

As you can see, without an up-to-date trademark application or registration, you might not be able to enforce your trademark rights against another person or business that is infringing your trademark. And the USPTO might have to abandon your application or cancel your registration.

To prevent all that from happening, make sure your application and registration information is always up-to-date. For more information, check out the Assignments page in the Trademarks section of USPTO.GOV and keep an eye out for more of these videos throughout the website.

I'm Mark Trademan, Trademark Information Network.

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