We’ve all been there. Maybe we find it in reviewing the chain of title for trademarks during due diligence. Maybe it’s something that another company filed that has nothing to do with us. Or maybe someone on your team made a typo (yup, no one is perfect!). But, however it happened, it’s there, in the USPTO records: an assignment inadvertently recorded against a registration that was not actually part of the assignment; a security interest recorded against the wrong application number; or a name change was erroneously recorded as a merger. Regardless of why or what, the bottom line is the same: there is an error in the chain of title for the application or registration. Oops! Now what? How do we get that error fixed and removed from the USPTO trademark records?
Like much of the federal government, the U.S. Copyright Office (the “Office”) is adjusting its practices and procedures in response to the COVID-19 pandemic. Unlike registration and recordation with the U.S. Patent and Trademark Office, copyright registration and recordation regulations still require the submission of hard copy materials in many instances. The Office’s technical infrastructure will not permit electronic filing of certain types of applications and cannot accommodate electronic submission of documents for recordation. The Office has been closed since March 13, 2020, with registration specialists working remotely. Hand deliveries are not accepted at this time; mail sent through the postal system or by commercial carrier is received at an off-site facility but will not be processed until the Office reopens.
We recently shared our Seven Secrets of Security Interests with some tips about security interests in IP registered in the U.S. But often, U.S. IP goes hand-in-hand with trademarks, patents, and copyrights registered in Canada. Should security interests against Canadian IP be treated the same as in the U.S.?
We asked our colleague Silvia de Sousa from Thompson Dorfman Sweatman LLP in Winnipeg, Manitoba to describe the basics of security interests involving Canadian trademarks (as well as patents and copyrights). Silvia’s answers appear below. Enjoy!
Well, they’re not really secrets. But whether you’re representing the bank taking a security interest, an owner granting one, or a buyer who wants to ensure that outstanding security interests are released before a deal closes, here are a few things to keep in mind when it comes to IP security interests.
Last time we talked about some important Do’s of IP due diligence. But what might the buyer want to avoid during due diligence?
Here are the top 5 Don’ts to consider:
So you’ve been asked to help acquire a company with an extensive IP portfolio. Great! Now it’s time for that mysterious task known as “due diligence.” Due diligence is intended to confirm all of the assets that a buyer will obtain in an acquisition and to resolve any discrepancies before the deal closes.