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How to Organize Pages Trademark Assignment

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[Morris] Hi, Im trademark attorney Morris Turek. I protect individuals and businesses throughout the world by assisting them with their important trademark matters. One question Im 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 good will 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 doesnt have to be in writing, its a very good idea for the assignment to take the form of a written and signed document so that questions of ownership dont come up in the future. If the trademark being transferred is t

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Why should one record a patent assignment with the USPTO?

Recording an assignment may be necessary to permit the assignee to take action in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46; MPEP 301, 302, 605. In other words, assignees may face obstacles prosecuting a patent without an executed assignment.

How do I record an assignment on USPTO?

Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet. You may email questions about filing electronic patent assignments to EPAS@uspto.gov .

How do I submit an assignment to trademark USPTO?

Requests to record assignments are filed on line through the Electronic Trademark Assignment System (ETAS) using . A trademark applicant can create and submit a trademark assignment recordation coversheet. You must also submit legal documentation to support the assignment.

Does a trademark assignment need to be signed by both parties?

Prepare a Trademark Assignment Agreement To be valid, the assignment must be signed by both parties. The parties should consult an attorney, specifically a trademark attorney, who can help draft an assignment that includes all the necessary information and language.

Does a patent assignment need to be recorded?

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.

How do I file a trademark assignment?

Requests to record assignments are filed on line through the Electronic Trademark Assignment System (ETAS) using . A trademark applicant can create and submit a trademark assignment recordation coversheet. You must also submit legal documentation to support the assignment.

How do I record an assignment with the USPTO?

Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet. You may email questions about filing electronic patent assignments to EPAS@uspto.gov .

Do you need to record a trademark assignment?

A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO).

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