Trademark Assignments and Recording
One of the top three things I get asked to look at and correct more often than anything else are Improperly Filed Trademark Assignments and Recordings.
We call them sometimes Recordation’s (same thing) But this is something to be aware of. A Trademark Assignment must have the proper “magic words” in it. For example, if a Trademark Assignment doesn’t also assign goodwill, then the Trademark Office isn’t going to register the assignment.
That’s just one trick. In addition, the Trademark Assignments must identify the Proper Entities. This is another thing I see people mess up all the time. You know, the legal forms you find on the internet? They just don’t tell you this. And what you’re really trying to establish is a “Chain of Title.” You want to establish true ownership of that registration; and when I see this issue come up, it’s usually as part of something called “due diligence.” So, it’s at a point where there’s financing involved in a transaction or one company is acquiring another. And not doing this right up front can cost you money and it can cost you time (a lot of time!).
So, the big takeaway here is that correcting assignments and misrecorded documents can cost 3-10 times more than doing the document right the first time. And although I don’t have this up here, it can also take months and months of time to correct. And that depends on delays at the Trademark Office.
But when you’re at the point of due diligence and you’re trying to get funding or close the purchase or sale of a business, you don’t want anything to hold it up. So, this is where it really pays to do it right the first time (long before due diligence).
So, if you got a Trademark Assignment or you’re about to try to record a Trademark Assignment, give me a call and let’s make sure it’s done right.
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