During the application process or after registration, a trademark or service mark owner may need to transfer the ownership to another person or entity or file for a change of name. For example, the need for a transfer of ownership may arise from the sale of the registrant’s business, a change in the registrant’s business entity form or name, or the registrant’s last name changed due to marriage.
Although it is not necessary to have a written assignment agreement for the transfer to be effective, it is highly advisable to do so. Some of the terms that may be included in a trademark assignment agreement are representation and warranties by the assignor regarding the right and title to the trademark and/or service mark, the amount of consideration to be paid, choice of venue in the event of litigation, among others.
If the trademark or service mark is a pending application or registered with the United States Patent and Trademark Office, the assignment should be filed with the Assignment Recordation Branch online through the Electronic Trademark Assignment System (ETAS). The online form must be completed, the assignment uploaded, and payment of the fee associated with the assignment recordation. Recording the assignment puts the public on notice regarding the rightful owner of the trademark or service mark.