There are many reasons why a trademark holder may need to formally change the trademark’s ownership information with the United States Patent and Trademark Office. The most common scenarios and instructions for carrying out such changes are listed below.
Change in Legal Name
When the owner of a trademark changes his or her name, that information will need to be provided to the USPTO. For example, if XYZ Company, Inc. changes its name to XYZ Systems Company, Inc., it will need to contact the USPTO and record the updated name change to ensure the records reflect the new legal name.
Change in Entity
It’s not uncommon for businesses to change their entity type over the years for personal, legal, or tax reasons. If this happens, the USPTO must be notified. For example, if John Smith Enterprises owns a trademark as a sole proprietor but later reforms as an LLC company (John Smith Enterprises, LLC) for tax benefits, the records must be amended with the USPTO to reflect the change in name and entity type.
Sale or Assignment of the Trademark
When a party sells or transfers ownership of their trademark to another business, it’s called an assignment. For example, Jane Doe sells her trademark to ABC Company. The records will need to be updated to show that ABC Company now owns the trademark in question.
How to Submit Ownership Changes to the USPTO
Ownership information of a trademark can be changed electronically by using the Electronic Trademark Assignment System (ETAS). You will need to fill out the necessary forms, upload documents that show evidence of the change in name or ownership (e.g. incorporation papers, statements describing the changes in ownership that are signed by the new owner and previous owner) and pay the filing fee.
Finally, you will want to keep tabs on your ownership change request via the Trademark Status and Document Retrieval System (TSDR). TSDR will allow you to see what documents were filed and ensure that the correct ownership information has been recorded.
Note of Caution: Please be advised that you may not use these methods to correct an application that was filed with the incorrect owner. In most cases if an application was filed and did not identify the correct owner the application is invalid, and you will have to reapply. This is a common mistake we see when an attorney that does not normally practice in this area of law files the application or an applicant files on their own.
If you need help changing the ownership information of a registered trademark, or if you’d like to sell your trademark to another party and you need assistance, contact our Intellectual Property and Trademark attorneys at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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