Tricks to Transferring Trademarks


A trademark assignment is the transfer of ownership of a mark.  This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.

Sounds pretty straightforward, right?  Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries.  Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned.  Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name.  The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.

With Halloween just around the corner, our “treat” for you is some of our favorite “tricks” we’ve picked up along the way when managing the assignment of trademark portfolios worldwide.

  1. If you’ve got it, “haunt” it. If budget permits, ask local counsel to conduct a search to confirm that your assignment covers the entire universe of marks to be transferred in a given jurisdiction.  If any marks are inadvertently excluded from the assignment, you may have to go through the entire process all over again (and pay double the fees – boo!).
  1. Get your “pumpkins” in a row. Generally, at the outset of a global assignment project, we like to ask counsel in each relevant jurisdiction to confirm the local requirements for assigning a mark, and to prepare any documents required to record the trademark assignment in their jurisdiction’s trademark office.  Ask counsel whether the assignment documents require notarization or legalization, and whether original documents are required.  Nailing down counsel’s answers to these questions as soon as possible can save some back-and-forth when arranging for execution of the documents. 
  1. Decide “witch” way to assign your marks. Do Trademark Office records reflect the current owner’s correct address?  Maybe not – for instance, you might have been waiting for the next renewal deadline to update the owner’s address associated with a particular registration.If some of the addresses aren’t current, ask counsel if it’s possible to record multiple assignment documents – that is, one document per address.  Sometimes filing multiple documents can be quicker and less costly than first updating the addresses and later assigning the marks together in the same document. 
  1. Note any “dead-lines.” Depending on the type of transaction driving the trademark assignment, time may pass between the effective date of the assignment, and the date that documents are filed to record the assignment in a given jurisdiction.  And beware! In some jurisdictions, waiting too long to file these documents could create issues or require the payment of penalties. 
  1. Determine “how-l” and when to assign pending applications. In some jurisdictions (e.g., Egypt), it’s not possible to record the assignment of a trademark application.  In cases like these, be sure that your docket reflects the need to ask local counsel about recording an assignment for the pending application as soon as it matures to registration. 

While all these tricks may not apply to your trademark assignment, here’s hoping they make the process at least a little less scary!

This entry was posted in Foreign, Prosecution Outside USA, Trademark Portfolio Management, Trademark Prosecution.
Date Published: September 11, 2018
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.