Did your business change its name? Change its entity type? Has the ownership of your trademark changed hands? If so, and you have a live federal trademark application or registration, you must tell the USPTO about these ownership changes. If you’re not sure how to go about that, we can help.
So, what exactly is an “ownership change.” Simply put, it involves any modification of the legal entity that owns the trademark application or registration. It might be a simple change, such as a change in the owner’s name or entity type, or it might be a little more complex, like an assignment through the sale of an entire business. Let’s take a look at three of the most common types of changes.
Here, the owner of the trademark stays the same, but the owner’s name changes. For example, say Jane Smith owned a particular trademark registration. Later on, she married and legally changed her name to Jane Doe. Jane must update the USPTO records for her registration to reflect her new legal name.
Here, the owner stays the same, but the type of entity changes. For example, say XYZ Incorporated owned a particular trademark application, but during the registration process re-formed the business as a limited liability company (XYZ, LLC). Notice, not only did XYZ change its entity type, it also changed its name. The company now must update the USPTO records to indicate the owner is XYZ, LLC.
Here, one party transfers, sells, or assigns its trademark rights to another person or business, so the owner of the mark changes. For example, say Jane Doe sold her company (along with its federally registered trademark) to XYZ, LLC. This transfer of ownership is called an assignment. XYZ must record this assignment with the USPTO so that the USPTO registration record accurately reflects that XYZ, LLC is the new owner of the mark that Jane Doe previously owned.
Why is it so important to keep your ownership information up-to-date? Without it, you could lose control of your trademark. Specifically, if you are the owner of the mark and your information is not up-to-date, your application may be refused by a USPTO examining attorney. In addition, you might not receive important USPTO notices and communications. You might lose the ability to timely respond to those notices and submit amendments to your application. Once your mark is registered, you might lose the ability to file necessary registration maintenance documents, use the registration as a basis for filing a foreign trademark application, and, most importantly, you might lose the ability to prove to infringing users in court that you are the true owner of the mark.