A trademark is an intellectual property asset that can be bought and sold. When the trademark owner sells her mark, she assigns the trademark registration to the buyer, who becomes the mark's new owner. The U.S. Patent and Trademark Office has established a process sellers can use to transfer the mark to the new owner.
Assigning a trademark is a two-step process. First, the seller and buyer sign an agreement that establishes the terms of the sale. At a minimum, the agreement should identify the buyer, the seller and the registration number of the trademark that is changing hands. It should also state the date on which the assignment is effective. The agreement should specify whether the seller is assigning her entire interest in the trademark, including the goodwill associated with the mark, or only a portion of her interest.
The second step of the process of assigning a trademark is to complete an online assignment form using the Electronic Trademark Assignment System, or ETAS. The seller enters specific information into the system about the buyer, the seller and the trademark being assigned. At the end of the process, the system assigns a unique identification number to the trademark and issues a confirmation receipt via email. The PTO then emails a Notice of Recordation or Non-Recordation.
The ETAS system requires input of a correspondence address, fax number and email address for the conveyor and the receiver, a designation of each party as an individual or an entity, and each party's citizenship. The registration number of the trademark must be entered, and a copy of the conveyance documents must be uploaded to ETAS. The conveyor must also pay a fee to record the assignment of a single trademark.
Effect of Assignment
When the transfer of ownership has been finalized, the buyer assumes the duties of the trademark owner. The new owner must use the mark as a trademark in commerce, advertise and promote the mark, police the marketplace for infringements, pay maintenance fees and make other administrative filings required to maintain the trademark registration.