Monday, February 8, 2010

Transferring Trademark Ownership to New Corporation

Dear Rich: I have two trademarks registered to a corporation and will be transferring the rights to use these trademarks to a new corporation. Do I have to notify the Patent and Trademark Office and how would I do that? Also I notice that someone asked about renewing a patent. Is that also necessary for trademarks? First of all, the Dear Rich Staff wants to acknowledge that the person who asked this question also happens to be the same person who comes by and fixes our mother's computer so we say thanks for all that great service over the years -- and BTW, we messed with the ethernet cords and wifi last time we were in town. Ooops!
As for your question, you need to do two things, (1) assign the marks to your corporation (see below); and (2) file that assignment along with a Trademark Assignment Recordation Coversheet, at the USPTO website.
What about renewal? You must file a renewal and declaration of continued use between the ninth and tenth anniversary of registration and you should file a declaration of continied use and (optional but recommended) a statement of incontestability between the fifth and sixth years of registration. The failure to file the declaration of continued use will result in the loss of the registration.
Trademark Assignment