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How to Send Trademark Assignment to Sign

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Morris Turek, a trademark attorney, explains that trademarks can indeed be transferred to another person or entity through a process called trademark assignment. For the assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, which is the public recognition of it. Without this goodwill, the transfer may be deemed an assignment in gross, risking loss of trademark rights. While a trademark assignment doesn’t legally require a written document, it is strongly recommended to create a written and signed record to avoid future ownership disputes.

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How do I submit 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 .

What is required for trademark assignment?

The trademark assignment document must be signed by the assignor or owner of the trademark in favor of the assignee or the new owner receiving the property rights over the trademark. Thereafter, the trademark assignment must be recorded with the Trademarks Office to reflect the new ownership.

How to do trademark assignment?

Filing an application for trademark assignment in Form TM-24 or Form TM-23 (in case of joint request). Such an application can be filed by either the assignor or the assignee or both. Filing of Form TM-P. Filing of all the requisite documents relating to trademark assignment with the Registrar of the trademark.

What is assignment with or without goodwill?

Under trademark assignment without goodwill, the assignor restricts the assignee from operating in the market where the assignor is already active. The assignee is permitted to use the same trademark but not for identical services/services as the assignor.

Does punctuation matter in trademarks?

What about other punctuation? Generally, a trademark may consist of any word, name, symbol, or device, or any combination thereof. 15 U.S.C. 1127. While punctuation can be included as an element of a mark, it generally creates no additional indicating function.

What is a trade mark assignment?

A trademark assignment is the transfer of an owners property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.

How long does it take to record a trademark assignment?

Usually, the process takes 12 to 18 months. Registering your trademark is a complex procedure that involves your application moving through various stages. Learning about each stage in the process will help you understand why getting a trademark takes as long as it does.

Do trademark assignments need to be in writing?

Trademark assignments must be in writing. The recording date of a document is the date it is filed with the USPTO. There may be assignments that are in whole or others that are considered to be partial assignments. This can become complicated if more than one person owns the trademark.

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