Fix code in the Trademark Assignment Agreement

Aug 6th, 2022
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How to fix code in the Trademark Assignment Agreement

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70 votes

One of the top three things I get asked to look at and correct more often than anything else are Improperly Filed Trademark Assignments and Recordings. We call them sometimes Recordations (same thing) But this is something to be aware of. A Trademark Assignment must have the proper magic words in it. For example, if a Trademark Assignment doesnt also assign goodwill, then the Trademark Office isnt going to register the assignment. Thats just one trick. In addition, the Trademark Assignments must identify the Proper Entities. This is another thing I see people mess up all the time. You know, the legal forms you find on the internet? They just dont tell you this. And what youre really trying to establish is a Chain of Title. You want to establish true ownership of that registration; and when I see this issue come up, its usually as part of something called due diligence. So, its at a point where theres financing involved in a transaction or one company is acquiring a

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Where/How to Search for U.S. Trademarks (Images) Find the code for your image by using either the keyword search or alphabetical index in: USPTO Design Search Code Manual. Example: the design code for a winged horse is 04.05.03. Go to TESS (USPTO Trademark Database): Use the Structured Form Search (Boolean)
If your trademark has not published in the Trademark Official Gazette, use the TEAS Voluntary Amendment form. If your trademark has published but hasnt registered, use the TEAS Post-Publication Amendment form. If your trademark has registered, use the TEAS Section 7 Request form.
What is a Design Mark? A design mark is used to register a stylized logo, design element, graphic, or image. This could protect your brand name if you plan to use a specific color, font style, or size for your logo. These are referred to as Special Form Drawings on the USPTO website.
Difference Between a Word Mark and a Design Mark The word mark is otherwise known as a standard character mark. Again, it is protection of the word itself and will prevent the registration of any similar sounding words for similar goods/services. A design mark incorporates some type of image as a part of the trademark.
Correcting filing errors using online forms Submit the form Voluntary Amendment Not in Response to USPTO Office Action/Letter. Before you can submit this form, you must wait 7 to 10 days after you submit your application form to ensure all your information is available in our database.
A design code is a six-digit numeric code that is used to describe a design element of a Trademark or Service Mark.
Under federal law, you can file a trademark amendment application if your requested change does not materially alter the character of the mark. The modified mark must contain the essence of the original mark. It must also create the same impression as the original mark. This means that the USPTO will consider
Design protection may be obtained to protect a products visual appearance, i.e. its shape, contours or colour, the look or aesthetic of an object. An example of a well-known design would be the shape of the MAGNUM ice cream which is protected throughout the world by Unilever as a registered design.

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