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Hi. I'm trademark attorney Morris Turek. I protect individuals and businesses throughout
the world by assisting them with their important trademark matters.
One question I'm often asked by both current and prospective clients is: "Can I transfer
my trademark to someone else?"
Well, the answer is yes. A trademark assignment is the transfer of trademark ownership from
one person or entity to another. In order for a trademark assignment to be valid and
enforceable, it must include the underlying goodwill associated with the trademark, which
is basically the recognition that the trademark has with the public. Otherwise, the transfer
of ownership will be considered an assignment in gross and all trademark rights could be
lost forever.
Although a trademark assignment doesn't have to be in writing, it's a very good idea for
the assignment to take the form of a written and signed document so that questions of ownership
don't come up in the future. If the trademark being transferred is the subject of an existing
federal trademark registration or pending trademark application, the trademark assignment
must be in writing and needs to be recorded with the Trademark Office. This can be done
electronically at the Trademark Office's website. It is important to promptly record the trademark
assignment so that the Trademark Office's records remain accurate and so that the public
is put on notice as to the rightful owner of the trademark.
Although a pending trademark application may be assigned prior to becoming a trademark
registration, you cannot assign an intent-to-use trademark application until the trademark
itself is in use in commerce. If an intent-to-use application is prematurely assigned, any resulting
trademark registration will be considered void and subject to cancellation.
It goes without saying that there are many pitfalls that must be avoided when assigning
a trademark in order to ensure that the transfer of ownership is valid, legal, and binding.
Therefore, you may want to consider working with an experienced and knowledgeable trademark
attorney so that you know everything has been done correctly.
If you would like to learn more about trademark assignments, or perhaps need some assistance
with preparing and recording a trademark assignment of your own, please feel free to give me a
call. I look forward to hearing from you soon.