Is It Possible to Transfer a Trademark in New Jersey?
As a business owner, you’ve likely poured all you have into ensuring the success of your company, including creating a logo or phrase to help establish your reputation. However, as time progresses, you may, for any number of reasons, need to transfer ownership of your trademark to another person. If this is the case, you may be unsure whether or not this is possible, and if so, how to navigate this process. The following blog explores what you should know about these matters, including the importance of working with a Bergen County, NJ trademark protection attorney to discuss your options and help you protect the business you’ve worked hard to build.
What Is a Trademark and Why Might I Want to Transfer It?
A trademark is a form of intellectual property, most often a word, phrase, or logo that helps clients and customers easily identify your brand, goods, and services. For example, McDonald’s “golden arches” or Nike’s “Just Do It” are both famous trademarks.
There are a number of reasons that someone may want to transfer ownership of their trademark, and doing so can often be a beneficial and strategic business option. One of the most common reasons that someone may need to transfer ownership of this form of intellectual property is that they have sold their business. If you have sold your company, any intellectual property, including trademarks, is often included as part of the sale.
In some instances, this transfer may be necessary if a partner is leaving the company. For example, if the trademark holder retires, they can then transfer ownership of the asset to the new owner of the company, whether it be a buyer or partner.
What Are the Steps in This Process?
If you need to transfer ownership of a trademark, it’s critical to understand how to navigate this process. Generally, the first step in this process is to draft a trademark assignment agreement. This essentially details the trademark name and registration number, clear transfer of ownership and goodwill, and the date of assignment, with signatures from both the current and new owners. This document is critical to ensuring that the transfer of ownership is legally binding.
If the trademark is registered with the United States Patent and Trademark Office (USPTO), you’ll need to file an Assignment Recordation Form Coversheet to ensure that it the transfer is recognized by the USPTO.
Finally, the new owner will need to ensure that they continue to file renewal applications and submit proof of continued use to keep the asset active. This offers legal protection in the event of encroachment or unauthorized use of the trademark.
What Are Common Legal Issues I Can Face?
Unfortunately, transferring ownership of a trademark can be tricky, as there may be a number of legal issues that can arise during this process. For example, if you transfer the asset without goodwill, it will lose its meaning and reputation, thus rendering it invalid. Additionally, even if the asset transfer is valid, failure to notify the USTPO means the transfer will not be legally recognized because the old owner will still be listed.
You should also note that issues could arise if past transfers were not accurately recorded, as this can lead to disputes as to who technically owns the trademark.
Because there are a number of issues that can arise during the transfer process, it is imperative to connect with an experienced attorney with the Law Offices of Richard E. Novak, LLC. Our team understands how complex matters involving intellectual property can be to navigate, which is why we can assist you during these times to achieve the best possible outcome for your circumstances. When you need help, contact us today to learn more.