Trademark Assignments And The Assignment Division Of The USPTOOnce Trademark rights exist they may be handled in a manner similar to any other type of property.
Trademark rights can be assigned in whole or in part and licensed either on an exclusive or non-exclusive basis.
In addition, a party who is the sole owner may transfer a portion of the mark to a third party, such as transferring a 50% share.
Yet another scenario may occur if the trademark owner wishes to assign a portion of a business together with the good will and trademarks associated with that portion, but retain rights in the trademark for uses relating to another portion of the business.
The USPTO enables the public to search trademark assignment records online by reel/frame number, serial number, registration number, international registration number, assignor name, assignee name, correspondent name, applicant name or domestic representative.
The assignee should be diligent in tracking any deadlines for responding to outstanding Office Actions and renewing any registered marks.The USPTO will record only those assignments that have been recorded in the International Register.Trademark registrants must perform their due diligence before filing their post registration documents.It is also important to note that the Assignment Branch of the USPTO does not review the substance of documents submitted for recording.The USPTO will determine the effect of a document only when an assignee attempts to take action with regard to the application or registration.This can become complicated if more than one person owns the trademark.A co-owner may assign his or her interest in a mark.Keep in mind that under these circumstances, both owners must file the necessary post registration documents including renewal applications.However, a trademark owner is not permitted to use an assignment to impose geographic restrictions on a registration.This should be accomplished via a concurrent use proceeding. An extension of protection may be assigned with the goodwill associated with the mark, but only to a third party that is a national of, is domicile in, or has a bona fide industrial commercial establishment in a country that is a contracting party to the Madrid Protocol.Assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization.