Should I Record a Trademark Assignment?
Recording Trademark Assignments
Even after a trademark assignment is properly executed, failing to record it with the USPTO can put those rights at serious risk. Trademark assignment recordation is a critical final step that protects purchasers, provides public notice, and prevents later conflicting claims of ownership.
Recordation Secures Priority and Cuts Off Conflicting Claims — Recording a trademark assignment ensures the mark cannot later be assigned to someone else without notice. When an assignment is made for valuable consideration and recorded within three months, it can void prior unrecorded assignments as long as the purchaser lacked notice of them.
The USPTO Provides Straightforward Recordation Options — Assignments may be recorded electronically through the USPTO’s Electronic Trademark Assignment System (ETAS) at no cost, or by mail using Form PTO-1594 for a fee. While no specific form of assignment is required, the agreement must be in writing, properly executed, and consistent with the information submitted to the USPTO.
Failure to Record Can Result in Complete Loss of Trademark Rights — Unrecorded assignments create significant risk during business sales, bankruptcies, and receiverships. If a later purchaser records its assignment first, it may obtain superior rights, even over an earlier buyer who paid for the trademark but failed to record.
For more information, see our blog post Record That Trademark Assignment!
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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