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How to Share Trademark Assignment

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Attorney Eels from Potts Weinstein discusses the formal process of transferring trademark ownership. This is necessary when a business changes its structure, such as transitioning from a sole proprietorship or partnership to an LLC or corporation, or when selling a business. To transfer ownership, one must file an assignment through the United States Patent and Trademark Office (USPTO). Viewers are directed to the USPTO website, where they can find the relevant forms in the "apply online" section, even if they are not applying for a new trademark. The video highlights the importance of completing this formal process for legal compliance and protection of trademark rights.

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Who are the owners of trademarks?

Trademark owner is the party who controls the nature and quality of the goods and services used in connection with the brand. The owner of a trademark is the person who applies the mark to goods that they produce, or uses the mark in the sale or advertising of services that they perform.

Can a trademark be shared?

When two or more entities come together jointly for the goods or services provided by them, they apply for joint ownership of the trademark of the goods or services provided. Where two legal entities jointly act as a proprietor of a trademark, they are said to be the joint owners of the trademark.

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.

What happens when a trademark is used by someone else?

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court.

How do I transfer a trademark to someone else?

To change the owner of a federal trademark registration or application, a trademark assignment should be signed and recorded with the USPTO. A trademark assignment is a document signed by the original owner (assignor) that transfers ownership of the trademark to a new owner (assignee).

Can it be 2 people on a trademark?

In the U.S. joint ownership of a trademark is legal. However, it is contrary to the fundamental trademark policy that a mark should identify and distinguish a single sources goods and/or services.

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