Tips for Transferring Trademarks in Light of COVID-19

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In 2017, we wrote about some of our favorite strategies for updating the ownership of global trademark portfolios. As we continue to support our clients during the pandemic, we’ve developed new strategies for documenting trademark ownership updates outside the U.S. Here, we share a few of these tips.

In this post, we focus on transferring — or assigning — trademark portfolios involving marks in multiple countries. Generally, the transfer of trademark rights from one entity to another must be documented with the trademark office in every country where the assignor owned marks. The requirements for recording a transfer vary by country but often involve submitting newly executed trademark assignment agreements, powers of attorney and other documents. These documents may also need to be notarized or legalized before submission.

One major impact of COVID-19 has been the temporary closure or suspension of activity of certain countries’ trademark offices and other government agencies. One of the first questions we ask local counsel in each jurisdiction is the status of their trademark office operations. In some cases, trademark offices have automatically extended deadlines during closures, which may impact the strategy and timing for documenting a trademark assignment.

In the U.S., in-person processing services at the Office of Authentications of the U.S. Department of State have been suspended since March 2020. This suspension may significantly affect a U.S. company’s ability to legalize documents needed to record the transfer of trademarks outside the U.S. While it is currently possible to mail in a request for legalization and other authentication services, the U.S. Department of State’s website warns that significant delays are inevitable. The U.S. Department of State has not yet set a date to resume its in-person operations.

Remote working arrangements and stay-at-home orders have also complicated the execution and notarization of original documents during the past few months. For example, certain documents required in support of trademark assignments must be signed in the presence of witnesses and/or a notary public.

If you determine that witnessing, notarization and legalization will be difficult or impossible, consider asking local counsel whether their trademark offices are willing to waive any rules. We have found that some trademark offices will record a trademark assignment based on existing paperwork or on scanned copies of documents instead of the originals. You may be able to submit witnessed, notarized and legalized documents later. If there is a deadline for recording a transfer of trademarks, check to see if the trademark office will grant an extension.

Don’t assume that all trademark offices will be flexible, however. Multiple trademark offices have continued to operate in some capacity and may not accept potential workarounds, such as electronic signatures or signing agreements in counterparts. For this reason, we suggest allowing plenty of time to discuss alternative strategies with local counsel.

Thanks to Jeff Doyle, of Doyle Authentications, for assistance with this post.

This entry was posted in Trademark, USPTO and tagged , , by .
Date Published: August 6, 2020
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.