Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Assignment of Trademarks Adds Email Confirmation

The Electronic Trademark Assignment System (ETAS) office of the United States Patent and Trademark Office (USPTO) announced several improvement including email confirmation of recordation.  Formerly, confirmations were sent via facsimile.

A Trademark Assignment is a contract that transfers ownership of a trademark.  Assignments should be recorded to provide notice to future buyers.

A trademark is intellectual property that may be transferred or sold. The law permits the transfer or sale of a trademark by means of a legal document called an Assignment. A properly executed assignment transfers all rights from the existing owner to another person (referred to as the Assignee). When the trademark is transferred, the Assignee becomes the new owner of the trademark and has the same rights as the original owner. The the U.S. Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title include, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. 

So, ETAS will record the following types of documents:

  • Assignment of the entire interest and the goodwill
  • Assignment of an undivided part of assignor's interest
  • Merger
  • Nunc Pro Tunc Assignment
  • Change Of Name
  • Security Interest
  • Corrective Assignment
  • Mortgage
  • Lien
  • License
  • Option

Recording a transfer gives notice to all future purchases of the owner's interest.

Having a contract for the sale and never recording it, may lead to the seller being able to transfer the property to third parties.

Trademark and Patent owners as well as attorneys should request a consultation with Loren Donald Pearson to have their client's assignments, licenses, and security interests properly recorded.