Trademark Assignments

Trademark Assignments-71
In this case (, 40 USPQ2d 1098 (TTAB 1996)), the assignment of the application as collateral provided that the application would be transferred back to the applicant upon repayment of the loan.In another case, the TTAB also made clear that even an assignment of an intent-to-use application to a parent company prior to filing an AAU or SOU violated Section 10(a)(1) because the parent company was not a successor to the Applicant’s business connected to the trademark. In fact, in this case the child company had already produced and sold products under the relevant mark before assigning the intent-to-use application to its parent company and continued in the exact same business after the transfer, which confirmed that the parent company was not the successor to this aspect of the business.With respect to transfers to a successor of an existing and ongoing business, the TTAB has provided some guidance on what constitutes an “ongoing and existing” business connected with the mark.

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Her practice focuses on all areas of intellectual property law.

Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement, as here, the entirety of the mark is being transferred to a new party.

A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo) and wishes to transfer the ownership of that trademark to another person.

Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.


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