IP Tech Knowledgy

Trademark registrants should be mindful to keep the records of the U.S. Patent and Trademark Office up to date. A main benefit of obtaining a federal registration is that it provides proof of ownership of a trademark when the registrant wants to stop an infringer.  It is prudent to have the ownership and contact information accurate at the USPTO. Otherwise, the aggrieved party sending the demand letter or filing suit will have to rush to clean up the records so it can prove to an infringer and the court that is the true record owner of the trademark.

At times, a company may reorganize its businesses and move all assets and operations into one entity from another. If the company intends to include the trademarks in that shift, an assignment document is necessary to transfer the mark and the goodwill. If the company is involved in a formal transaction, be sure that all the trademarks are included in the assignment and listed in the exhibits, and that the transaction follow-up includes filing at the USPTO a confirmatory assignment showing the transfer of the marks and goodwill.

Prompt filing also alleviates a future problem when the registration needs to be renewed: the actual or intended owner of the mark at the time for renewal may not be the entity listed as the registrant in the USPTO records. A nuance in the USPTO rules allows an entity that is not the owner to file the renewal: “The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be filed by the owner of the registration.” However, it is better to have the registration in proper shape than to take chances.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com