Massachusetts Assignment of Trademark
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How to fill out Assignment Of Trademark?
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FAQ
Unregistered Trademark: Section 39 of the Trade Marks Act, 1999, stipulates that the trademarks can be allocated with or without the goodwill of the business. The request has to be made in Form TM -16 for an unregistered trademark to be assigned.
Assignment of a trademark occurs when the ownership of such mark as such, is transferred from one party to another whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trade marks.
Instead, a trademark must be assigned through an Assignment of Rights. That Assignment must transfer not only the trademark and the registration, but must also transfer the goodwill behind the trademark to be valid.
Section 39 stipulates that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.
What are the documents required for licensing a trademark assignment ? A valid identity proof of both parties, a copy of the assignment agreement and a filled form TM-P of Trademarks Act 1999 must be produced along with fee payment.
An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner to the new owner. This will enable the public to search and recognize the new trademark owner.
Filing an application for trademark assignment in Form TM-24 or Form TM-23 (in case of joint request). Such an application can be filed by either the assignor or the assignee or both. Filing of Form TM-P. Filing of all the requisite documents relating to trademark assignment with the Registrar of the trademark.
Steps in Assigning a TrademarkDraft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question.
Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet. You may email questions about filing electronic patent assignments to EPAS@uspto.gov .
Generally, paper filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.