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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

  • When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
  • When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
  • When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
  • When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
  • When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

  • All involved parties – the assignor and assignee – should be identified.
  • The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
  • Consideration must be listed (i.e. what each party is receiving).
  • List the effective date of the transfer.
  • Contract must be duly executed.
  • Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

  • Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
  • Sale of business : A trademark owner may decide to focus on a different business or retire.
  • Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

  • Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
  • Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
  • Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
  • Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
  • Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
  • Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

trademark assignment

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the Electronic Trademark Assignment System ( ETAS ).  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

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What is a Nunc Pro Tunc Trademark Assignment?

A nunc pro tunc trademark assignment is a legal document that retroactively assigns ownership of a trademark from one party to another. The term “nunc pro tunc” is a Latin phrase that means “now for then,” and it indicates that the assignment is being made retroactive to a date in the past.

Nunc pro tunc assignments are typically used when there has been a mistake or oversight in the assignment of a trademark, and the parties involved want to correct the mistake retroactively. For example, if a trademark was assigned to the wrong party by mistake, a nunc pro tunc assignment can be used to correct the error and transfer ownership of the trademark to the correct party.

Nunc pro tunc assignments are typically used in conjunction with other legal documents, such as a trademark assignment agreement, which outlines the terms of the assignment and sets forth the obligations of the parties involved. In order to be effective, a nunc pro tunc assignment must be executed by both the assignor (the party transferring ownership of the trademark) and the assignee (the party receiving ownership of the trademark), and it must be properly recorded with the relevant trademark office.

When Should I Submit a Nunc Pro Tunc Assignment?

You should consider submitting a nunc pro tunc assignment if you have discovered that a mistake was made in the assignment of a trademark, and you want to correct the mistake retroactively. This can be important because a mistake in the assignment of a trademark can lead to confusion and potential legal issues, such as disputes over ownership or the right to use the trademark.

It’s important to note that nunc pro tunc assignments are typically only used in specific circumstances, and they may not be appropriate in all cases. For example, a nunc pro tunc assignment may not be appropriate if there is a dispute over ownership of the trademark, or if the original assignment was made fraudulently. In these cases, it may be necessary to pursue other legal remedies to resolve the issue.

If you are considering submitting a nunc pro tunc assignment, it’s a good idea to consult with a qualified attorney who can help you understand your options and determine the best course of action. An attorney can also help you draft and file the necessary documents, and ensure that the assignment is properly recorded with the relevant trademark office.

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 A Dive into ‘Nunc Pro Tunc’

nunc pro tunc trademark assignment template

Understanding Nunc Pro Tunc in Legal Parlance

A phrase in Latin, ‘Nunc Pro Tunc,’ stands for “now for then.” However, it is also used as a term to mean correction of judicial orders. Using the same in terms of  Intellectual Property Rights (IPRs)  corresponds to the assignment of such assets.

nunc pro tunc trademark assignment template

Let’s Pick a General Example

The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by  Patent Laws . Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title. Therefore, Plaintiff A then responds by getting the Nunc Pro Tunc assignment signed by back-dating the assignment to a date before the lawsuit was lodged and filed. To give you a head up: This does not work as a good legitimate practice in all jurisdictions.

Nunc Pro Tunc: In Business Parlance

For a trademark registered on 1 st January 2015, Nunc Pro Tunc assignment typically shall look like this:

 “Now, therefore, for good and valuable consideration, the ASSIGNOR agrees that ASSIGNOR hereby assigned unto the ASSIGNEE Nunc Pro Tunc effective as of 1 st September 2022, all right, title, and interest in and to the trademark XXX bearing registration no:******. In testimony, whereof, the ASSIGNOR has signed this instrument on 1 st September 2022.”

Herein, the assignment is deemed to have been executed on 1 st January 2015; but is deemed to have been effective from 1 st September 2022.

In business terms, Nunc Pro Tunc   assignments are usually used where past  Intellectual Property (IP)  assignments are made verbally or by mode of conduct. The same is not very unusual since it may so happen that proprietors keen to make an immediate move in the market may “leave for later” or may forget to reduce agreements in writing. In such scenarios, Nunc Pro Tunc   assignments are commonly drawn and deduced to bridge the gaps in the “chain of title” for an IP asset. It can also happen when entities and/or assets are sold – but proper paperwork is misplaced. In such an event, purchasers often consider themselves as the obvious owners of such patents, trademarks, or copyright belonging to the former owner but the missing documents lead to ‘gaps’ in the chain of title. These ‘gaps’ can be cured by obtaining a Nunc Pro Tunc   assignment from the original owner of the IP asset in favor of the later purchaser of the transaction. In the same manner, Nunc Pro Tunc   assignments are often utilized to reach an amicable settlement in litigated matters involving claims over an IP asset, be it a patent, trademark, and/or copyright.

Nunc Pro Tunc: To Reach a Settlement in Litigation

For the purpose of litigation, Nunc Pro Tunc   assignments are generally utilized to give a party a legal standing to initiate litigation, i.e., the right to sue or be sued. To have a legal ‘standing’ to initiate litigation, a party to the suit must have proof of rightful ownership or proof of title and/or interest in the patent, trademark, or copyright subject. However, as discussed earlier hereinbefore, for courts, ‘standing’ is passed based on the effective date of the assignment and not the earlier date listed in the Nunc Pro Tunc   assignment.

Conclusion: An Acceptable Practice or Not?

It can be simply contemplated that where a non-owner or licensee is given the right to sue, it would give impetus to enmesh the judiciary in abstract legal battles while creating a risk of multiple litigations. It would also provide an incentive for parties to acquire assignment rights to expand their scope of operation and litigation. Inevitably, it would result in a delay in justice delivery and an increase in expenses. The same would defeat the cause of the judicial organ.

It is for this reason that in some countries, such Nunc Pro Tunc assignments are recorded, while in others, no acquiescence of retroactive effect assignments is admitted.

Documenting deeds of assignments after a transaction that has been assumed to be in effect is most certainly not a best practice and can affirmatively lead to several issues. However, it is the only way to attempt to fix an error that has occurred sometime in the past.

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Intellectual Property: Assignments and Transfers | Practical Law

nunc pro tunc trademark assignment template

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845  (approx. 23 pages).

PatentAssociate.com

Stephen E. Zweig, PhD JD, Patent Attorney

Nunc Pro Trunc assignments for patents and trademarks assignments

Patent and Trademark assignments

The uspto epas/etas assignment process, and legal chain of title principles, help the public determine who owns a given patent or trademark. “ nunc pro trunc assignments ” are sometimes used to clear up gaps in the record..

Who owns that patent? Some countries automatically assume that patents belong to the employer. However the US legal system presumes that patents originally belong to their human inventors. This is based on various “right of capture” cases involving foxes and other critters that go back to medieval/roman times.

The chain of title

A “chain of title” shows how ownership and other rights to a piece of property changed over time. The underlying concepts are based on real estate law. Over over hundreds of years, this law developed methods to protect the innocent against various real estate scams. Here we will skip over many years of colorful and sometimes bloody history and focus on modern-day IP.

The law requires an unbroken series of records handing off ownership from one owner to the next. This chain must extend from the original owners (the inventors) to the present owners. The USPTO helps manage this process through their online “Electronic Patent Assignment System” (EPAS). The USPTO also has a similar system for Trademarks, called the “Electronic Trademark Assignment System” (ETAS).

EPAS – Electronic Patent Assignment System

The EPAS system automatically records (and display s) the chain of title from the original inventors to the present owner(s). It is often useful to see “who” owns “what.”

Real estate history is full of frauds, such as selling the same property multiple times to unsuspecting purchasers. So, various legal anti-fraud measures have evolved.

In particular, the law tends to treat innocent “good faith” (bona fide) purchasers more kindly. But the purchasers must show some prudence, such as by looking up assignment records before purchasing. This system won’t work if the assignment records are not current. To keep the system up-to-date, the USPTO follows 35 USC § 261 , which states:

35 USC § 261: An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

What does this legalese mean? It means you should register your patent (or trademark) assignments within three months .

Nunc Pro Trunc Assignments

In the real world, businesses are often bought and sold with long contracts. The IP list usually ends up in the appendix of these contracts. As an intangible property, everyone tends to overlook this appendix. Then, sometimes much later (often as part of due diligence for a later sale), someone notices that the IP was not correctly assigned. The results are often quite exciting. Can you say “ SNAFU?”

Retroactive assignments : You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these “ Nunc Pro Tunc Assignments ” (Latin for “now for then”). However, the drawback of such late assignments is that the “automatic” anti-fraud legal protection no longer operates. You don’t need these automatic protections if there is no fraud. However, the automatic protection occurring with on-time filing is preferable.

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Nunc Pro Tunc Assignment to Bridge Priority

A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for “now for then,” a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such as to bridge a gap in the chain of title where the proper paperwork is missing.

Cancellation Proceeding

In Narita Export LLC v. Adaptrend, Inc. , Cancellation No. 92074784, 2022 USPQ2d 857 (TTAB Sept. 20, 2022), the issue of priority of use hinged on a nunc pro tunc assignment and an oral assignment.

Narita sought to cancel Adaptrend’s TONOSAMA trademark registration (Reg. No. 5873672) for “gift baskets . . .” in Class 30 under Section 2(d) for likelihood of confusion with Narita’s TONOSAMA trademark for confectionary and various snack foods.

As the petitioner, and not owning a U.S. registration, Narita had the burden of establishing priority. Hydro-Dynamics, Inc. v. George Putnam & Co., Inc. , 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987); Giersch v. Scripps Networks, Inc. , 90 USPQ2d 1020, 1023 (TTAB 2009). Adaptend asserted a first use date of June 13, 2016, while Narita claimed an allegation of use anywhere of March 27, 2016. But, unless Adaptrend can prove an earlier date of use than its underlying application filing date of March 27, 2019, Narita need only establish a first use date earlier than March 27, 2019 in order to prevail on priority. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v. Doskocil Mfg. Co. , 108 USPQ2d 1134, 1140-41 (TTAB 2013).

Nunc Pro Tunc Assignment to Establish Priority

Here, Narita’s priority date of March 27, 2016 was based on the use of the mark by the prior owner, so Narita had to establish a chain of title to establish its entitlement to that earlier date. See W. Fla. Seafood Inc. v. Jet Rests. Inc. , 31 F.2d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“one should look at the evidence as a whole, as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use.”).

The original trademark owner, TI Express, allegedly selected and created the TONOSAMA mark and logo, and had its first sale of “TONOSAMA branded candy and snack foods in the U.S. on March 27, 2016.”

Narita filed Application Serial No. 88665122 for the TONOSAMA mark on October 23, 2019. The application claimed an allegation of use anywhere of March 27, 2016.

On October 20, 2020, TI Express executed a nunc pro tunc trademark assignment to Narita with an effective date of November 25, 2016, memorializing an “oral agreement” assigning the TONOSAMA mark to Narita along with the goodwill associated with the mark.

Although the documentary evidence was minimal with respect to sales of candy subsequent to March 2016 date of first use, the declarations were sufficient to trace the use in commerce of Narita’s TONOSAMA mark with candy back to March 27, 2016, which is earlier than the priority dates asserted by Adaptrend.

With Narita having established priority, the TTAB found a likelihood of confusion because the marks were identical, the goods overlapped, and traveled in the same channels of trade. The TTAB granted summary judgment, stating “Registration No. 5873672 will be cancelled in due course.”

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

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APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

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Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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FEIG ELECTRONIC: Moscow-City Skyscrapers Streamline Parking Access and Control with Secure RFID

Feig electronic partners with isbc group to deploy ucode dna rfid security and parking access control solution in moscow business district.

Weilburg, Germany  — December 3,  2019  —  FEIG ELECTRONIC , a leading global supplier of radio frequency identification (RFID) readers and antennas with fifty years of industry experience, announces deployment of the UCODE DNA RFID security and parking contactless identification solution in the Moscow International Business Center, known as Moscow-City, one of the world’s largest business district projects.

The management of Moscow-City not only selected long-range, passive UHF RFID to implement in its controlled parking areas, it also chose to implement UCODE DNA , the highest form of secure RAIN RFID technology, developed by NXP Semiconductors.

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Panoramic view of Moscow city and Moskva River at sunset. New modern futuristic skyscrapers of Moscow-City – International Business Center, toned

“Underscoring NXP’s innovation and leadership in developing advanced RAIN RFID technologies, our UCODE DNA was chosen to be incorporated with the FEIG and ISBC implementation of the contactless identification system in the prestigious Moscow-City,” said Mahdi Mekic, marketing director for RAIN RFID with NXP Semiconductors. “This exciting project represents yet another successful deployment of NXP’s contactless portfolio, and showcases our continued ability to meet the high-security requirements of highly demanding applications without compromising user convenience.”

“UCODE DNA is considered the only identification technology to match the physical protection of a barrier with the cybersecurity necessary to truly protect entrances from unauthorized access,” said Manuel Haertlé, senior product manager for FEIG Electronic. “As a respected contactless payment technology company, FEIG applies security know-how from its payment terminals, which are fully certified according to the latest high-class security standards, into our RFID systems. FEIG vehicle access control RFID readers incorporate advanced secure key storage elements, supporting various methods for secure key injection.”

FEIG’s partner ISBC Group provided the knowledge and support for this successful implementation using  FEIG’s long-range UHF RFID . The resulting system enables authorized vehicle entry into areas reserved for private residential use or corporate tenants, while also allowing availability of temporary, fee-based visitor parking. Thanks to the cryptographic authentication of UCODE DNA, both the tag and reader must go through an authentication procedure before the reader will validate the data from the tag, which is transmitted wirelessly. This level of authentication is typically used in the most secure data communication networks.

“The system’s two-step authentication means that only authorized equipment can handle the secure protocol and the data exchange with the UCODE DNA based tag. Without the required cryptographic secrets, other readers would query the tag in vain, because the tag’s response cannot be interpreted or understood,” said Andrey Krasovskiy, director of the RFID department at ISBC Group. “On top of this, each data exchange in the authentication process is unique, so even if a malicious actor were to intercept the communication, the transmission is only good for a single exchange and the tag’s unique identity is protected from cloning.”

Established in 1992 and still growing, Moscow-City is the revitalization and transformation of an industrial riverfront into a new, modern, vibrant and upscale business and residential district. A mix of residential, hotel, office, retail and entertainment facilities, it is located about four kilometers west of Red Square along the Moscow River. Twelve of the twenty-three planned facilities have already been completed, with seven currently under construction. Six skyscrapers in Moscow-City reach a height of at least 300 meters, including Europe’s tallest building, Federation Tower, which rises more than 100 stories.

Partnering with ISBC and deploying FEIG Electronic RFID solutions, the Moscow International Business Center is delivering security and access control to its city center today, as it grows into the city of tomorrow.

About FEIG ELECTRONIC

FEIG ELECTRONIC GmbH, a leading global supplier of RFID readers and antennas is one of the few suppliers worldwide offering RFID readers and antennas for all standard operating frequencies: LF (125 kHz), HF (13.56 MHz), UHF (860-960 MHz). A trusted pioneer in RFID with more than 50 years of industry experience, FEIG ELECTRONIC delivers unrivaled data collection, authentication, and identification solutions, as well as secure contactless payment systems. Readers from FEIG ELECTRONIC, which are available for plug-in, desktop, and handheld applications, support next-generation contactless credit cards, debit cards, smart cards, NFC and access control credentials to enable fast, accurate, reliable and secure transactions. For more information, visit:  www.feig.de/en

Founded in Moscow in 2002, ISBC Group provides knowledge and support to integrators for their successful implementation of RFID and smart card-based solutions. The company specializes in the distribution of smart card equipment, contact and contactless card manufacturing, smart card and RFID personalization services, and information security.  Its Research and Design Center is focused specifically on RFID, primarily HF and UHF solutions with NXP tags, and software development for the smart card industry. For more information visit:  https://isbc-cards.com/

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confirmatory deed of assignment trademark

Understanding a deed of assignment for intellectual property

A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.

Find out more about intellectual property basics

confirmatory deed of assignment trademark

by   Brette Sember, J.D.

Brette Sember, J.D., practiced law in New York, including divorce, mediation, family law, adoption, probate and estat...

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Updated on: January 22, 2024 · 3min read

Understanding intellectual property in business

How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.

Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.

Illustrations and graphics surrounding the words "Intellectual Property"

A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.

Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.

Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.

A deed of assignment must be in writing and should include:

  • The names and addresses of the assignor and assignee
  • A description of the program or product for which the rights are being transferred
  • A statement that all intellectual property rights to the property are being transferred
  • Signatures of the parties and the date of the agreement execution

The deed could also include the following sections, where applicable:

  • Consideration, or payment, to be made to the original owner.
  • Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
  • Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
  • Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.

Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.

For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.

Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.

If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.

The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .

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Deed of Assignment (for Intellectual Property)

a formal legal document used to transfer all rights

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

  • Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
  • Date : The date on which the deed is executed should be clearly mentioned.
  • Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
  • Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
  • Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
  • Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
  • Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
  • Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
  • Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
  • Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
  • Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

Letter of Assignment

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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  • Ten Questions about Confirmatory Assignments

confirmatory deed of assignment trademark

1. Depending upon the applicable IP rights and related law of contract of the jurisdiction, to what extent can an unwritten agreement validly assign IP rights? 2. Assuming that an unwritten assigment is valid, what is the evidentiary showing that is required? 3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? 4. Is the evidentiary showing different in connection with establishing the validity of the assignment in the context of a transaction? 5. How can a purchaser receive sufficient comfort about the validity of the assignment, or is it a matter of risk allocation depending upon the positon of the parties? 6. Does the standard of evidence to establish an unwritten assignment differ once again in the context of a court proceeding? 7. Does the standard of evidence to establish an unwritten assignment differ yet again iin the context of taxation? 8. Is a confirmatory assignment a form of ratification? 9. If it not a form of ratification, what is the proper legal characterization for the agreement? 10. In light of all of the foregoing, does the confirmatory assignment confer any benefit to the parties, other evidentiary or substantive?

Ten Questions about Confirmatory Assignments

13 comments:

Confirmatory assignments are frequently used where a written assignment already exists, but the parties do not want to disclose that document because it contains sensitive information (e.g. payments, etc.). In addition, they are often used to confirm an 'automatic' assignment (e.g. from an employee to his/her employer). The latter may be useful, for example, when submitting a US application with UK inventors.

confirmatory deed of assignment trademark

In the United States, this is a statutory question: "Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing." 35 USC Section 261. Your questions are far more interesting as applied to licenses or servitudes more generally. Based on hundreds of years of common law, one would imagine that all personal property, including patents, would require encumbrances to be publicly recorded for them to be enforceable on subsequent purchasers for value without actual notice. In fact, equitable servitudes on personal property were not enforceable at all at common law. As far as I can tell, patents present a unique exception to this history. For that reason I have wondered whether it is fair even to call patents property -- despite their being deemed so by statute. On my view, this is the most underappreciated obstacle to the emergence of a healthy market for patents. Lemley and Myhrvold suggested years ago a solution to the problem -- namely, of requiring the public disclosure of all assignments and licenses. That seems to have gone nowhere thanks to an incomplete understanding by current stakeholders of how such a transition would result in an entirely new market equilibrium, or at least to the general desire for incremental rather than radical changes to the status quo.

Confirmatory assignments are commonly used to record assignments in writing where the commercial terms of an assignment are to remain confidential. I cannot think of many instances where I would be happy to rely on a written confirmation of an unwritten assignment. It is my understanding that in most common law countries an assignment must be in writing for it to be legally effective, otherwise at best your unwritten assignment may only transfer an equitable interest in the relevant IP. A type of assignment document I have occasionally seen and used is the assignment that is both operative and confirmatory. In other words, "I confirm that I assigned, but if that assignment wasn't legally effective for any reason then I hereby assign". It isn't ideal, but sometimes it's the only way to fix a break in the chain of title when you really don’t think you can rely on that unwritten assignment.

3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? Yes, that is possible in certain jurisdictions. At the most you would need a date of assignment and particulars of the assignee and the assignor. The relevant forms necessary to record the assignment are prepared by the agents and signed on behalf of the assignee. Example, Singapore

Rob hit the nail on the head. They are used to simplify matters in circumstances where the parties may have been better to have signed short-form agreemnts. A party will often not want to disclose a document with all of the juicy commercial terms, so a confirmatory assignment may be used. A final (arguably erroneous) use may be where a party has, to settle a matter, assigned a CTM under cover of a letter or unilateral agreement signed only by the owner. In the case of a CTM, the assignment has to be signed by both parties to be valid. Therefore, whilst the mark may be assigned in the head of the previous owner, something more needs to be done to validly assign. Arguably the follow-up is not confirmatory in those circumstances, but I've seen the document that followed described as confirmatory.

Associated with the issue of confirmatory assignments is the issue of assignment documents with a purported "effective date" earlier than the date of execution of the document. In jurisdictions where rights in an application can only be assigned in writing, the writing requirement was then not fulfilled as at the "effective date". This may be particularly important in relation to priority claims.

I have seen such Confirmatory Assignments used as evidence supporting a transfer request before the EPO, but it wasn't my job to question them even though the whole procedure looked quite fishy to me. Once upon a time there was a nice little company A which got gobbled by company B. One year later, company B was in turn purchased lock, stock and barrel by company C. A, B and C were in three different countries. A's European representative kept prosecuting the EP cases, but only bothered to file a transfer request when a given application was just about to mature into a grant, providing in most cases a confirmatory assignment drafted by an US notary public as evidence. The document stated that A's IP was transferred to three entities Ca, Cb and Cc, which are all presumably 100% subsidiaries of C. I infer that the applications are jointly owned by all three companies. The assignment is signed by Ca, Cb and Cc's officers as well as the notary. The document couldn't have been signed by A's officers, since A did not exist anymore at that point. There is no mention whatsoever of company B either , so the document did not describe what actually happened, since A could never have dealt directly with C. The representative's cover letter only requests transfer to company Ca, leaving Cb and Cc out of the picture, and Ca is the only name entered in the EPO's register. I googled up a bit and I found out that B wrote in its ultimate annual that it now owned all of B's IP, and C later stated in its own annual report that B's IP was now located in yet another subsidiary Cd, different from Ca, Cb or Cc. In one case the Umschreibestelle questioned the confirmatory assignment in that in only bore the signature of one of the parties. The representative adamantly replied that the assignment should be taken at face value and that's it. The EPO did not insist, and took down the transfer - in Ca's name only. In one of the applications this examiner was bone-headed enough to be minded to consider a refusal, prompting the representative to file a "divisional" application in order to keep the show going. The weird thing was that the "divisional" was in A's name, even though it no longer existed for years. The new application was eventually abandoned, so all the interesting questions which arose did not need to be answered. From the preceding, I think I'd start kicking and yelling about who actually owns a patent (and thus entitled to initiate action) if I were ever dragged before court in an infringement action where a confirmatory assignment was involved. The standard for proving a transfer of rights appears to be much lower as to the right to transfer of an opposition. A confirmatory assignment may appear a practical shortcut, but it could be a false saving. As to the argument that a confirmatory assignment can keep details secret, I don't think they're worth the risk either. I've seen IP sale contracts accepted as evidence for a transfer before the EPO where more black ink was poured to obscure passages than the CIA ever used when declassifying a document. BTW, one of these contracts involved yet another of C's subsidiries transferring its IP to numbered entities conveniently located in tax flexible territories.

confirmatory deed of assignment trademark

Thanks for all of your great comments. In one off-site communication on the topic yesterday, I suggested that confirmatory assignments are among the "dirty little secrets" of IP practice. She wrote back that in fact they are the "dity little not-so-secrets" of IP. I suspect that we are both right.

Something that does not appear to be widely appreciated is that the box for the date of agreement on EPO Form 1002 is provided for the convenience of the applicant only, there being no requirement in the EPC to provide a date. I have often filed forms with no date where the information was not available, and no objection has ever been raised. I have only seen this explicitly stated in the answer to question 80 in Dr. Günter Gall's classic book for EQE candidates "European & International patent applications: questions and answers" [ISBN 0-85121-555-6; 1989 edition]. Dr Günter Gall was a Director of the EPO and evidently wrote with authority. I have had more knowledgeable inventors query the appropriateness of signing any sort of assignment of rights that he doesn't own because the invention belongs to the employer by virtue of UK law, and have then had to explain the USA [for example] doesn't recognise this aspect of UK law. Such assignments made in respect of a first filing are certainly useful when subsequently filing in the USA if the inventor is no longer contactable or become uncooperative, eg due to imminent redundancy.

Anonymous' knowledgeable inventors have a point, and this has always been my rationale for obtaining confirmatory assignments. It must surely be a fundamental principle that one cannot assign what one does not own, so a written assignment from an employee to an employer that already owns the invention by terms of a contract of employment must surely be void. The problem is not solved by writing the employment contract in such a way as to place the employee under an obligation to assign, because a subsequent assignment to another party, while being a breach of contract, will not necessarily enable the invention to be reclaimed by the employer (see, eg Stanford v Roche 583 F.3d 832 (Fed. Cir. 2009). As I understand it, the US law relating to employee inventions is basically the common law. The issue is not that the USPTO will not recognise that the employer owns the invention, rather it is the specific requirement that the inventor assign the rights reflected in the particular patent application, ie that a suitable assignment cannot be completed until the inventor has the actual filed specification and claims before her. A general assignment of the invention, and all notional future rights, will not suffice for this purpose. However, an assignment of a PCT application designating the US is fine (although it may take a little effort to persuade the USPTO to accept a document that is not in its standard form). An unavailable or uncooperative inventor remains problematic even if you have a suitable assignment document, because the USPTO cannot accept the filed application until it has an inventor's declaration, or a petition has been granted to allow the application to be accepted without the signed declaration. Though not a US attorney, for my sins I have found myself with clients in this situation, and it can be a lot of work to resolve.

"This and the related topic of failure to agree or document assignment of IPRs arise all too frequently. I have been faced with the challenge of "I paid, so I own" throughout my career. Here are 10 thoughts on this topic: 1. No one should believe that the law will come to their rescue if they do not document a written assignment and have it signed by the assignor and the assignee. 2. Assignments of IPRs are a perfect example of lack of global harmonisation. There is huge discrepancy between national laws as to what formalities are required - few require more than a written assignment signed by both parties. 3. The greatest density of disputes is between consultants and the corporations who hire them. The expectation is that IPRs in the "work product" automatically transfer. Big mistake. 4. English law enjoys equity, and can be persuaded to find an intention to assign (aka an equitable assignment). Hoping for this result is a lottery. In other parts of Europe, the odds are worse. 5. The position is not as random within an employee/employer relationship, because generally the first owner is the employer. However, at the edges ("course of employment") it is well worth documenting the position. In this context, do not assume that ownership is the end of the matter. Always think about attribution issues (such as moral rights) and economic reward (for exceptional contribution). 6. Failure to document the IPR position is statistically likely to create a significant commercial issue downstream. I have personally seen IPOs delayed, joint ventures stall and tens of disputes that frustrate and delay commercial exploitation. 7. The consolation prize in an ownership dispute is typically a licence. Within this one word, is a world of pain as the parties debate scope (field of use), term (for a project to perpetual), ambit (exclusive to non-exclusive), not to mention royalty. So whilst ownership is undoubtedly first place, bottom of the class will not get much at all. 8. Banks and investors still struggle to understand and value IPRs in the same way as tangible assets such as property and stock, so they scare easily. If chain of title and ownership is not clear, expect them to have significant concerns in all other areas such as validity and infringement. 9. Joint ownership looks like a good compromise. Normally it isn't. There is no global uniformity on the rights conferred on joint owners - and even within a jurisdiction it's different between the various IPRs. 10. Which means that I'm normally just so relieved to receive a confirmatory assignment, that I seldom have the energy to think about Neil's 10 questions - but now I will!"

Many interesting comments on assignments. Here is a further related issue, perhaps basic compared to a confirmatory assignment under the original fact pattern. Assume the inventor has executed an assignment to her employer for a US provisional patent application that includes assignment of all later applications, using standard language regarding assigning international applications, US, non-US applications. The assignment properly assigns the right to claim priority. Then a PCT application is timely filed that claims priority to this provisional. The PCT application includes new disclosure in the specification, including new examples, and new claims. Is a second assignment needed or does the assignment of the provisional suffice? For all jurisdictions? If a new assignment is needed, how is it worded to avoid the issue of 're-assigning' what has already been assigned in the provisional assignment? Seems one can only assign rights one has not already assigned away.

In answer to the last comment, yes, a new assignment is needed. An assignment has to relate to an invention, and if that invention is new, it cannot have been previously assigned. Equitably, yes, but then we argue over whether the new invention is actually covered.

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confirmatory deed of assignment trademark

Closing and Post-Closing Issues

By Lanning G. Bryer

I. MEANS OF ACQUIRING INTANGIBLE ASSETS II. CONDITIONS TO CLOSING III. CLOSING DOCUMENTS IV. CLOSING DAY V. POST-CLOSING ISSUES VI. CONCLUSION

The deal is virtually done. All that remains is for the parties to “close” the deal. A common definition of a “Closing” date is that date upon which all conditions precedent set forth in an agreement must be satisfied. What seems like a relatively simple and quick process can be anything from short and sweet to long and painful. The three most important skills for the attorney attending a Closing to exercise in order to achieve a successful Closing are anticipation, preparation and organization. If all necessary documents have been prepared and issues anticipated and addressed, the Closing can be seamless. Furthermore, good organization on a complex transaction can make what would be a long, drawn out-process much smoother and more efficient. The following paper identifies and then discusses many of the most common issues to arise during the Closing and post-Closing of a business transaction involving trademark rights.

[1] Lanning G. Bryer, a partner in the New York office of the law firm Ladas & Parry, has written extensively on intellectual property issues. The author acknowledges the assistance of Scott J. Lebson, Esq., an associate in Ladas & Parry’s New York office, in the writing of this paper, which was first presented by Mr. Bryer at the INTA’s Trademarks in Business Transactions Forum in New York City, February 25-26, 2002. Mr. Bryer can be reached via e-mail at  [email protected] . Copyright © 2002 by Lanning G. Bryer. All Rights Reserved

I. MEANS OF ACQUIRING INTANGIBLE ASSETS

In many instances, it is critical to understand the transfer of intellectual property as an essential aspect of a larger transaction, not simply the transfer of intellectual property rights by itself. On the other hand, intellectual property is very often the predominant factor driving mergers and acquisitions. The transaction should be construed in the context of a sale of an entire business in which those intangible assets are used. Generally, businesses are sold either by the purchase of the stock in a corporation or though a purchase of assets used by the business to be sold. Under either scenario, two basic sets of documents, an “acquisition agreement” and “transfer documents” will be prepared and negotiated.

  II. CONDITIONS TO CLOSING

Buyer and Seller typically specify conditions that must be present or events that must occur before they are obligated to consummate the deal. A Seller typically makes representations and warranties about the business as of the date that the acquisition agreement is executed, but that date may be weeks or months prior to Closing, especially if antirust or other regulatory approvals are required in order to close the transaction. The Buyer will typically require that at Closing, the Seller warrant that the representations are still true. If certain statements are no longer true, the Buyer might have the option of declining to go through with the transaction as specified. Other conditions of Closing may reflect issues that come to light during the negotiation of the agreement. For example, in a stock sale, if the Buyer learns certain trademark rights are not owned by the corporation whose stock is being acquired, it may require that those assets either be transferred to the corporation before Closing or directly to the Buyer at Closing. If the Seller does not comply, the Buyer will not be obligated to buy the stock of the corporation.

III. CLOSING DOCUMENTS

A. purchase agreement:, 1. further assurances, b. general trademark assignment agreement.

1. Assignment – Goodwill – United States of America 2. Assignment – Goodwill – Worldwide 3. United States Issues – Intent-to-Use Applications – Verified Statement of Use 4. Intent-to-Use Applications – Amendment to Allege Use 5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

C. CONFIRMATORY ASSIGNMENT DOCUMENTS FOR RECORDAL IN THE RELEVANT JURISDICTIONS WHERE TRADEMARK RIGHTS EXIST

1. Worldwide Recordal of Intellectual Property Rights 2. Separate Documents for Each Jurisdiction are Required. 3. Costs

D. COMMERCIAL LOAN DOCUMENTS E. TRADEMARK SECURITY AGREEMENT F. RELEASE AGREEMENTS G. OPINION LETTERS H. LICENSE AGREEMENTS I. ANCILLARY AGREEMENTS AND OBLIGATIONS 

In most instances, the Purchase Agreement does not actually effectuate a transfer of assets from Seller to Buyer. Instead, it merely embodies the Seller’s promise to sell stock or assets to the Buyer under certain terms. The consummation of the transaction takes place at the Closing or at a later date (post-Closing) when the parties execute transfer documents and any other ancillary agreements. This is especially true in terms of trademark rights due to their territorial nature. This may dictate a number of specific procedures which are governed by the law of each individual jurisdiction in which the trademark rights exist.

Trademark rights require specific confirmatory assignment and other

documentation to be prepared in accordance with local trademark practice for filing at the relevant Trademarks Office. Additionally, the documents required to be submitted in many jurisdictions frequently change or new requirements are added. Therefore, it may be necessary for the Seller to execute additional documentation subsequent to Closing.

In many instances, the Buyer may not be notified that it is required to submit additional documentation from the Seller until weeks or months after the Closing. Trademark rights in certain jurisdictions may not be capable of being transferred due to current political difficulties (e.g., Iraq, Libya or Afghanistan). Therefore, the Buyer may wish to make certain that the Seller (or its successors or assigns), is required to cooperate and execute such documentation.

“Further Assurances” clauses are critical in order to make certain that when this contingency arises, the Buyer can be in a position to seek Seller’s cooperation. Cooperation from the Seller is especially critical in transactions involving large trademark portfolios where the Buyer may require the Seller’s cooperation in execution of additional documents post-Closing on several occasions. The Buyer may need to ensure that it maintains an officer capable of executing documents post-Closing, especially where the corporate entity acquiring the rights changes its corporate structure by merger or acquisition.

The General Trademark Assignment Agreement is the master assignment

agreement which conveys “equitable title” to all trademark rights which are identified in a schedule, usually attached as an exhibit. In many instances, this schedule can be quite extensive as it should identify all trademarks, including common law rights, pending applications and granted registrations being transferred for each jurisdiction. This document is executed at the Closing and should bear an effective date as of the Closing date, unless the specific circumstances of the transaction dictates otherwise. The General Trademark Assignment Agreement serves several purposes:

(1) to clearly set forth and identify all trademark rights being assigned; (2) to demonstrate to tax authorities that equitable or beneficial title has passed to the Buyer; (3) to make certain that certain technical requirements unique to trademark practice are met, such as the transfer of goodwill, in order to cure any such deficiencies in the Purchase Agreement; (4) sets forth the acknowledgment of rights; (5) contains representations and warranties; (6) sets forth the obligation to execute other confirmatory documents; (7) contains further assurances clauses; (8) sets forth possible retention of rights; and (9) can be used for general corporate purposes.

1. Assignment – Goodwill – United States of America

In the United States, a trademark cannot be assigned separate and apart from the “goodwill” it symbolizes. In addition to existing case law reinforcing this traditional requirement, the Lanham Act specifically requires that the goodwill associated with a trademark accompany any transfer of the trademark itself. Section 10 of the Lanham Act provides:

“[a] registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.”

A trademark is considered merely a symbol of goodwill and has no independent significance apart from the goodwill associated therewith. Attempts to transfer trademarks without the associated goodwill of the business have been characterized as “assignments in gross” and are invalid.

The public policy behind the requirement for transferring the goodwill of the business in conjunction with the trademark itself is to prevent use of a trademark with a different goodwill and different product which may result in deception upon the consumer public. The requirement that goodwill accompany the trademark ensures that a transferee’s use will not be deceptive and will not break the continuity of the goodwill associated therewith.

2. Assignment – Goodwill – Worldwide

However, unlike the United States, many jurisdictions throughout the world do not impose a similar goodwill requirement in conjunction with the assignment of trademarks. In fact, the majority rule worldwide is that trademarks may be assigned without the goodwill. There are basically three categories worldwide in which the transfer of trademarks may or may not be transferred with goodwill. These comprise countries which:

(a) allow unfettered assignments of trademarks; (b) allow assignments with or without the goodwill but impose an advertising requirement; and (c) impose a goodwill requirement such as the United States.

In view of the above and the conflicting laws with respect to the transfer of goodwill, the General Trademark Assignment Agreement should specifically address the category of goodwill being transferred.

3. United States Issues – Intent-to-Use Applications – Verified Statement of Use

The Lanham Act allows for the application of trademarks based upon a bona fide intent-to-use the trademark at a later date. Although the Lanham Act allows for the assignment of intent-to-use (ITU) applications, it also imposes specific requirements limiting the circumstances in which they may be validly transferred. Section 10 of the Lanham Act provides:

“[n]o application to register a mark under section 1051(b) (intent-to-use applications) of this title shall be assignable prior to … the filing of the verified statement of use….except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.”

Essentially, this statute requires that either use of the mark is made (along with the proper filing of the Verified Statement of Use with the Patent & Trademark Office) or the entire business associated with the intent-to-use trademark applications has been transferred before the assignment can be considered valid.

For those instances where intent-to-use applications cannot be made subject to the assignment, either because the application has not been converted to a use-based application by the filing of an Amendment to Allege Use or the Verified Statement of Use has not or cannot be filed because use has not and will not be made by the Seller and the Buyer cannot make bona fide use of the trademark within the required time periods, it may be necessary for the parties to agree to abandonment of the application by the Seller. Towards that end, the Buyer should negotiate an undertaking on behalf of the Seller to file the necessary documentation at the USPTO to expressly abandon the intent-to-use application and not to interfere with any new applications for the trademark filed by the Buyer. Potential difficulties in adopting this approach include:

(a) loss of priority; and (b) the potential for third party objections to any new applications for the trademark which may be subsequently filed based upon priority of use.

4. Intent-to-Use Applications – Amendment to Allege Use

If use of the trademark has been made, it may be possible to file an “Amendment

to Allege Use” before the application is published for opposition, together with evidence of the assignment in order to convert this intent-to-use application into a use-based application. Once this documentation has been received and officially processed by the United States Patent and Trademark Office, this would allow for assignment of the application.

5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

If the application has already been published for opposition and it is too late to file an Amendment to Allege Use, the parties can simply agree to allow the prosecution of the intent-to-use application to continue unfettered by the Seller until such time as the Verified Statement of Use is filed. At that point, assignment of the intent-to-use trademark can take place.

It is critical that intent-to-use trademark applications are identified early so that the parties may afford them the proper treatment under current U.S. trademark practice. As it turns out, very often these trademark applications cannot be assigned at a Closing or post-Closing ceremony. This circumstance illustrates the importance of having a further assurance clause such that when the ITU applications are ready to be assigned, the Seller must execute the necessary documentation. This often takes place well after the Closing date.

1. Worldwide Recordal of Intellectual Property Rights

With the exception of all-stock deals or relatively similar stock transactions, the assets, including the trademark rights of the acquired company, need to be transferred into the name of the new owner in  each jurisdiction where such rights exist. Timely recordal of a change of ownership is critical to protect the ongoing validity and enforcement of intellectual property rights for several reasons, including:

(a) If a change of ownership is not promptly recorded, a misconception can arise in the marketplace as to the identity of the actual trademark owner, leading to a possible loss of rights where a trademark no longer functions as a true indication of origin. This is particularly true in the case of well-known trademarks, or in the case of other marks which are extensively used in their particular jurisdiction;

(b) The new owner may not be able to prosecute infringements, file oppositions or attend to renewals. For example, enforcement of a trademark can only be carried out under the authority of the owner of record or its exclusive licensee. If prompt injunctive relief is required, an undesired delay will result from a necessity to record the transfer of rights. Furthermore, the right of the trademark owner to obtain damages for acts of infringement which occurred before the transfer documents were recorded may be lost in certain jurisdictions.

(c) Fines and/or penalties may be assessed for late recordal of a transfer. In certain jurisdictions, there are time limits after which it may be too late to effect proper recordal of an assignment.

(d) The failure or delay in recording a transfer of ownership may result in a possible loss of royalties. For example, if a license is to be granted and recorded under a trademark, the licensor must be the owner of record. Therefore, a delay in recording the transfer can delay the date when the license agreement becomes effective; this, in turn, can delay manufacturing and/or sales. The resulting loss of royalties may not be recoverable. In a number of countries, a license agreement must be submitted to and approved by governmental authorities and the record owner should appear as the licensor. Delay in recording thus delays approval, with consequential loss of royalties.

(e) License recordals and registered user entries will no longer be current and may affect the validity of the use by a licensee and/or governmental approval for foreign exchange authorizations for remission of royalties.

(f) In the event an “equitable transfer” occurs without the requisite official change of “record ownership” at the relevant trademark offices throughout the world, the new owner will encounter enormous difficulties when confronted with the maintenance, sale, enforcement, hypothecation, licensing and/or use of the trademark rights. For example, proof of use (where required for maintenance of existing trademark registrations) may not be accepted when used by the current owner unless that party is now reflected as the “record owner”.

2. Separate Documents for Each Jurisdiction are Required.

In order to reflect the new owner of a trademark as the “owner of record”, it will be necessary in most jurisdictions for counsel to prepare separate assignment documents for  each  jurisdiction in which such right exists. In some jurisdictions, a certified copy of a “general” worldwide assignment may be acceptable. Trademark statutes exist in most countries of the world and provide a mechanism for the recordal of a change of ownership at a central registry. The form and substance of these documents vary from jurisdiction to jurisdiction, which underscores the advisability for the preparation of separate documents for each  jurisdiction. Such documents must be filed and recorded at the respective local registry. Furthermore, several multi-country registration systems exist, such as International Registration under the Madrid Protocol which has special requirements in order to properly record a transfer of title. In this respect, it is recommended that the acquiring company engage counsel experienced in the worldwide transfer of intellectual property rights and who is familiar with the local requirements for the preparation and recordal of documents necessary for each jurisdiction.

Other issues arise with respect to the filing and recordal of the assignment documents at the respective local registry. In particular, stamp, value added or  ad valorem  taxes may be assessed on the transfer or official actions may issue encompassing a potentially broad range of issues (e.g., “associated” trademarks, advertising and publication requirements) as discussed more fully below. Local requirements underscore the need for separate transfer documents to be prepared, executed and recorded in each jurisdiction in their native language. Furthermore, confidential information which the Buyer does not wish to disclose can be omitted as each transfer document can be prepared simply to satisfy the local requirements for transfer of the national trademark rights exclusively.

Where a significant number of intellectual property rights exist in multiple jurisdictions that are the subject of a merger or acquisition, the costs of simply preparing and recording the necessary documents can be substantial. Official fees are often assessed by the number of trademarks or patents included in the transfer. The burden of absorbing the costs of effecting recordal of the assignment or merger frequently is borne by the acquirer. However, this is not always the case. In some cases, the costs are factored into the purchase price and in other cases these costs are shared by the parties. For instance, the parties can agree to have the Seller absorb the costs for preparation of the documents while the Buyer pays for the charges incurred in connection with recordal of the assignment at the local Trademark Offices. Accordingly, it is advisable that the issue of costs are discussed by the parties and treated in the Purchase or Acquisition Agreement entered into during the course of negotiations.

D. COMMERCIAL LOAN DOCUMENTS

Where elements of a transaction are being financed by a commercial lender, all commercial loan and security documents should be executed prior to or at the Closing ceremony. These documents can include:

(a) Credit Agreements; (b) Loan and Guarantee Agreements; (c) Promissory Notes; (d) Escrow Agreements (e) Security Agreements; (f) Release Agreements pertaining to prior commercial security obligations among one or all of the parties; (g) Consents, Waivers and Subordination agreements; and (h) All other relevant Commercial Loan and Security Documents;

E. TRADEMARK SECURITY AGREEMENT

Like many commercial transactions, business transactions involving trademarks frequently require that the acquirer borrow funds to finance the transaction. In these instances, the lender providing the funds will seek collateral from the borrower to secure the loan as protection against the risk of default. When trademark rights are the subject of a security interest, the grant must take place in the form of a Trademark Security Agreement or similar document.

F. RELEASE AGREEMENTS

Prior to Closing, the presence of any liens, security interests or other encumbrances in trademarks will be revealed in one of two ways:

1. Representations and Warranties:  Carefully negotiated representations and warranties in the Purchase Agreement and/or General Trademark Assignment Agreement will require the Seller to confirm whether prior encumbrances exist against the trademark rights. If such encumbrances against the trademarks exist and are still valid and subsisting, Buyer’s counsel must require the disclosure of these security interests and, wherever possible, require the release of these security interests prior to or at the Closing ceremony.

2. Due Diligence:  Due diligence conducted on behalf of the Buyer, including searches of the relevant trademark registries, should reveal the existence of security interests which have been properly perfected against registered trademark rights. Where unregistered trademarks rights have been collateralized, however, a search of the Trademark Registry would not reveal such encumbrance.

For those trademark rights that have been made the subject of a security interest, it is critical to make certain that a Release of these rights is executed on behalf of the secured party in favor of the Grantor (i.e., the Seller). An obligation to obtain the release of these security interests should be made a condition precedent to the transfer. In most instances, the secured party will not be present at the Closing. If possible, the Release should be executed  Nunc Pro Tunc  to the date of the Closing. The rationale behind this is to make certain that when the Release is presented for recordal at the relevant Trademark Office, the assignment document does not bear an execution and/or effective date prior to the date of the Release. The Release should always be filed and recorded prior to the assignment document in order that the proper chronological chain of title is reflected on the Trademark Register.

Regardless of the manner in which prior security interests against registered or unregistered rights are discovered, arranging for execution of appropriate release documentation (either a Release Agreement or UCC-3) prior to or simultaneously at the Closing is critical. Furthermore, if the secured party is not the Seller, there is no guarantee that the secured party will necessarily release its security interest in the trademarks, depending upon the nature of its prior business with the Seller. In any event, execution of appropriate release documentation by the Seller should be made a condition precedent to performance on behalf of the Buyer.

G. OPINION LETTERS

Seller’s counsel is frequently required to deliver an opinion letter at Closing

concerning trademark issues in business transactions. For an acquiring or investing company, opinion letters are significant in that they are intended to bind the Seller to representations typically on the following:

(a) ownership; (b) validity; (c) enforceability; (d) absence of encumbrances; (e) non-infringement of third party rights; (f) non-infringement by third party; (g) effectiveness of proposed security documents for attachment, perfection and priority of a security interest; and, (g) valuation of the trademark portfolio.

Whenever possible, opinion letters concerning trademark rights should be

rendered by the Seller’s trademark counsel, who, in all likelihood, is already quite familiar with the portfolio. If necessary, extensive due diligence may need to occur before the rendering of an opinion letter. Opinion letters are equally critical in financing or licensing transactions where the trademark is serving as the primary asset or collateral. Separate valuation opinions may also be required to be delivered at Closing. These opinions are concerned with assessing trademarks using different accounting methodologies to determine the actual or fair market value of the trademark asset.

H. LICENSE AGREEMENTS

Many business use intellectual property, including trademarks, that is licensedfrom third parties. The method upon which trademark licenses may be transferred to a Buyer depends upon whether the transaction is a share purchase or an asset purchase. In the case of a share purchase, the Buyer’s position is relatively straightforward, since by acquiring the shares in the company, the Buyer will automatically acquire all pre-existing commercial agreements, including all trademark license agreements. In the case of an asset purchase, any existing trademark licenses will not pass automatically and will need to be specifically transferred to the Buyer. The possible methods of transferring a trademark license include:

A Novation Agreement between the Seller, the Buyer and the licensor.  The Buyer then becomes a party to the license in place of the Seller, and the Seller is released from its obligations under the license.

Assignment or sublicensing of the license  . The prior license may contain an express prohibition on the assignment or sublicensing of the license without the consent of the licensor. Any and all consents should therefore be obtained prior to Closing. The Buyer and Seller will need to determine whether the obligation to negotiate and obtain such consents falls on the Buyer or the Seller. The acquisition agreement may even provide that the Buyer is not obligated to close the transaction if consents from key licensors cannot be obtained.

I. ANCILLARY AGREEMENTS AND OBLIGATIONS

The acquisition agreement often specifies other obligations of the parties related to the acquisition. With respect to trademarks, a license from the Seller to the Buyer or vice versa, is not uncommon. This typically occurs in situations where the Seller is parting with one of its businesses but has certain trademark rights that are used in that business and the business it is retaining. In such a situation, the Seller can either retain the shared trademark right and license it to the Buyer post-Closing or sell it to the Buyer and take a license back. Additionally, short-term licenses may be needed to allow the Seller to phase out its use of certain trademarks post-Closing.

IV. CLOSING DAY

A. execution process b. payment c. delivery of related documents and files: , a. execution process.

(1) Location  – having a central location bringing together all therelevant parties for execution of the documents is helpful. There are distinct benefits in arranging for execution of all necessary documents, including confirmatory assignment documents, at Closing, including:

(a) by having a central location for execution of all the documentation, the presence of all necessary parties, including duly authorized officers of the Buyer and Seller, to complete execution of the documents results in greater efficiency in terms of time and reduced costs for the party bearing the expense, usually the Buyer.

(b) by not executing the documents piece-mail, counsel for the Buyer can immediately take possession of the confirmatory assignment documents and begin the process of dispatching the documents overseas for filing at the respective trademark offices. This is critical for two reasons:

(i) it eliminates the risk, which exists in many jurisdictions, that the Trademarks Office will impose fines or penalties for late submission of change of ownership documentation.

(ii) it eliminates the risk of rejection of the documents in their entirety for late submission or “staleness”. This is especially true if the documents are backdated or bear an effective date earlier than the date of actual execution and the jurisdiction has a particularly short filing deadline.

(2) Availability of notaries:  by having all of the confirmatory assignment documents executed at the Closing or post-Closing ceremony, the parties will be able to take advantage of the presence of attesting notaries and witnesses as well as their designated signatories. When executing confirmatory assignment documents for purposes or recordal at national trademark offices, very often these documents require notarization and/or consular legalization or authentication by Apostille. For those countries that require consular legalization, especially in large transactions, by having both the Seller and Buyer execute all the confirmatory assignment documents in one location, the notarial acknowledgments will be uniform. This, in turn, will expedite the process of authentication, certification of the notarial acknowledgment and consular legalization at the Department of State or individual foreign consulates.

(3) Authorization of Officers to Execute Documents:  The parties should require documentary evidence of the representations of both Buyer and Seller to legally execute the Closing documents and bind their companies. This evidence might include a Power of Attorney, a Board of Directors Resolution, Certificates of Incorporation or By-Laws. In terms of recording the assignment of rights abroad, several jurisdictions, especially in Latin America, require detailed notarized documents providing that the officer who executed the assignment documents on behalf of the company (whether Buyer or Seller), has been appointed as an agent of the company authorized to act on its behalf or appointed as an officer pursuant to a specific Resolution of the Board of Directors or other documents. In most instances, this will require the completion of detailed information such as the date of the resolution and/or the date that the company was incorporated.

(4) Country/Place of Execution:   The place of execution will affect the manner in which the documents are notarized and/or legalized. In terms of a worldwide recordal program, having all the documents executed and subsequently notarized by notaries who are qualified in the same county or country will hasten the legalization process in that the notarials can be certified by at a single County Clerk’s office. By not doing so, having several documents sent to several different counties for certification can result in significant delay.

(5) Contingencies:  Trademark counsel, whether representing the Buyer or Seller, should be prepared for all contingencies which may arise at a Closing with respect to execution of the documentation. Such contingencies can include:

(a) Errors in Preparation:  Due to the jurisdictional nature in which trademark rights arise, the preparation of an extraordinary amount of documentation is required in terms of preparing for a worldwide assignment recordal. As such, if an error in preparation is discovered at the Closing, trademark counsel should be prepared to immediately correct such error(s) in order to promptly arrange for execution of the new, correct document. Towards that end, counsel should make certain in advance that:

(i) Adequate staff is available to implement such changes; Electronic versions of all documents are at counsel’s disposal in order to promptly implement such corrections.

(b) Errors in Execution:  In terms of worldwide trademark assignment recordal programs requiring execution of what can be an extraordinary amount of documentation, it is inevitable that mistakes in execution will occur. This situation arises more frequently when several different parties are required to execute the same document, such as officers of each party, attesting witnesses and notaries. As discussed above, counsel should be in a position to have adequate staff and electronic versions available to promptly arrange for the preparation of new documentation.

(6) Corporate Seals:  Corporate seals for each entity should be available at the Closing. Trademark counsel should make certain well in advance of the Closing date that either the officers of each company bring such seals to the Closing or that new seals are promptly ordered and available by the Closing date. Although affixing corporate seals can occur at any time subsequent to the Closing, this may delay the filing and ultimately the recordal of the assignment documents at the Trademark Registries. The failure to affix corporate seals can result in rejection of the assignment documents in several jurisdictions.

The following concepts should be kept in mind in terms of transfer

1. Check/wire transfer:  all pertinent banking particulars should be available to the parties, especially in the context of a wire transfer, so that the appropriate funds can be transferred to the Seller without undue complication;

2. Confirmation of receipt:  confirmation of receipt of such funds should be available and delivered to the Seller upon request.

3. Escrow Accounts:  established.

C. DELIVERY OF RELATED DOCUMENTS AND FILES:

1. Files  :  From a trademark standpoint, relevant files pertaining to the

trademark rights should be delivered to the new owner, to the extent possible, at or post-Closing, which can include:

(a) pending application files:  should be delivered to counsel for Buyer in order to make certain that all actions and/or deadlines are met. (b) opposition/cancellation files;  (c) litigation files;  (d) prior chain of title files;  (e) pending renewal files;  (f). license files; and (g) general trademark files. 

In arms length transactions, Buyer’s trademark counsel will often be different from that of the Seller. Therefore, Buyer’s counsel should prepare a simple, but formal letter to Seller’s counsel requesting the immediate transfer of all files subject to the transaction.

2. Certificates of Registration:  To the extent possible, Certificates of Registration for each trademark registration should be delivered to the Buyer at Closing or shortly thereafter. Depending upon the specific portfolio, rights in the trademark may have been registered several years or decades ago, and therefore, it is not unusual for many of these certificates to have been lost or destroyed. In order to record the assignment in favor of the Buyer in those jurisdictions which require submission of the Certificate of Registration, it will be necessary to obtain certified copies of the Certificate of Registration from the Trademarks Office. In large transactions, this could result in significant additional expenses, especially in less sophisticated jurisdictions, which the parties should anticipate. If not negotiated in the Purchase Agreement or General Trademark Assignment Agreement, this additional expense will usually be borne by the Buyer.

3. Letters to local trademark counsel re: file transfer:  Where several trademark applications, renewal filings or conflicts are pending worldwide and if the Buyer prefers to use local counsel differing from that of the Seller, Buyer should notify its preferred counsel to instruct Seller’s counsel to immediately transfer such files. Buyer’s preferred counsel should then file the appropriate substitution of counsel documentation with the Trademarks Office where necessary so as not to interfere with the prosecution of the applications when the assignment documents are filed. At the very least, notice to all counsel by Seller’s counsel should be sent out advising of the change in ownership and responsibility.

V. POST-CLOSING ISSUES:

A. immediate docketing of trademarks/action dates: b. handling actions (official actions/renewals/payments) c. review of files to re-assess value of trademarks/major markets: d. filing and recordal of confirmatory assignment documents in each jurisdiction where trademark rights exist e. filing and recordal of confirmatory documents to record a merger and/or change of name f. security interests, a. immediate docketing of trademarks/action dates:.

It is critical that upon possession of the transferred files, an immediate review to determine when renewal dates, terms, responses to official actions and other “action” dates are due. In addition to the particulars of the trademark (mark, registration number, registration date, etc.), these “action” dates should be immediately uploaded into a computer database in order to alert counsel to any impending actions.

B. HANDLING ACTIONS (OFFICIAL ACTIONS/RENEWALS/PAYMENTS)

Any and all trademark applications and registrations requiring immediate action should be brought to the new owner’s attention in order to prevent the loss of such rights. Very often, the new owner will conduct a complete review of which trademarks it is interested in maintaining, however, this process can very often be quite lengthy. Therefore, it is critical that the new owner be advised of immediate action dates in order that their instructions may be timely received. This obligation on the Seller should be a condition of the sale and include a post-Closing undertaking by Seller to assist Buyer in taking any and all steps necessary to preserve and protect the trademark rights.

C. REVIEW OF FILES TO RE-ASSESS VALUE OF TRADEMARKS/MAJOR MARKETS:

Buyer may wish to eliminate any unwanted registrations or applications subsequent to the acquisition. They can abandon them at the time of renewal and just not record assignments against them.

D. FILING AND RECORDAL OF CONFIRMATORY ASSIGNMENT DOCUMENTS IN EACH JURISDICTION WHERE TRADEMARK RIGHTS EXIST

(1) Filing expenses:  Expenses associated with the filing and recordal

of confirmatory assignment documents to record the Buyer as the official “owner of record” can, especially in transactions where worldwide trademark portfolios are being assigned, be quite expensive. There are several costs associated with the filing and recordal of the documentation, including:

i. government fees:  often assessed on a per trademark basis; ii. local counsel fees:  in connection with filing the assignment recordal application iii. taxes;  depending upon the jurisdiction in the form of ad valorem, value added or stamp duties; iv. translation fees:  upon filing or in connection with the official publication of the assignment (if required); v. publication fees:   in connection with local advertising or publication of the transfer in a local newspaper or periodical (if required); vi. foreign consular legalization or authentication charges;  vii. charges for obtaining duplicate or replacement Certificates of Registrati on:  if required; and viii. recordation of any change of address:  if required.

(2) Consideration:  Several jurisdictions require that a specific monetary consideration be recited in the Deed of Assignment for recordal purposes. If the trademarks are assigned as part of a transaction involving the transfer of other assets, the consideration for the transfer is some portion of the consideration for the entire transaction. Prior to filing, trademark counsel should consult with the new owner of the trademarks to determine an appropriate consideration to be recited in each Deed of Assignment for those jurisdictions where it is mandatory to recite same. Trademark counsel should be familiar with the possible local tax requirements when advising the new owner so as not to trigger any unanticipated local tax assessments upon the transfer. Additionally, where tax assessments cannot be avoided upon the transfer, trademark counsel and Buyer should evaluate and determine the specific amount to be paid to the local tax authorities well in advance of filing so that the Buyer can factor this amount into its budget.

(3 Legalization/Authentications:  In several jurisdictions, prior to filing the confirmatory assignment documentation, it will be necessary to arrange for the consular legalization and/or authentication of the confirmatory assignment documentation. While some embassies undertake the process of legalization in an expedient fashion, many embassies, especially from less sophisticated jurisdictions, have a slow turnaround time. Additionally, it is often necessary to have documents which require legalization to be sent to a County Clerks’ office to certify that the notary is, in fact, a notary public in good standing in that country and/or to have the documents sent to the Department of State as well.

(4) Filing Process:  When the confirmatory assignment documents have been executed, notarized and legalized (where necessary) and after a careful review to determine that no information or signatures are missing, the documents are ready to be filed at the respective trademark offices. Trademark counsel should consider the following issues when forwarding the assignment documentation to local counsel for filing:

(a) pending trademark applications:  in order to not interfere with the prosecution of the application, trademark counsel should consider using the same agent for purposes of recording the assignment. If trademark counsel would prefer to use a different agent than the one prosecuting the application, counsel should coordinate its effort with the agent of record and its preferred agent so as not to interfere with the prosecution.

(b) pending renewal applications:  where a renewal application is pending in the name of the new owner, the assignment documentation must be filed with the same agent in order that the agent can prove that the entity renewing the registration is, in fact, the new owner.

(c) deadlines:  certain jurisdictions require the filing of the assignment documentation within a certain period of time from the date of execution. For example, some British law countries still operating under the 1938 Trade Marks Act require assignments made without goodwill to be filed within six months of the date of execution for advertising purposes. Other countries which impose a deadline upon filing of assignment documents include:

(d) official actions:  It is practically inevitable that when arranging for the recordal of an assignment against hundreds or even thousands of trademarks on a worldwide basis, objections and official actions will issue by the Trademarks Office. Among the types of official actions to be anticipated are:

(i) owner of record:  the Trademark Registry does not reflect the Seller (assignor) as the official “owner of record”. For whatever reason, the Seller never undertook to record itself as the new owner against the trademark rights in a particular jurisdiction. Accordingly, the Registrar will require that documentation evidencing the assignment from the previous owner to the Seller be submitted together with the new assignment documentation.

(ii) “association” requirements:  the trademark laws of several jurisdictions have a requirement in place known as the “association” requirement. Under the association requirement, if an application for assignment is filed only against some, but not all, trademarks owned by an assignor which it has registered at a particular trademark office, the Examiner may issue an official action claiming that the assignment cannot proceed due to the existence of “associated” trademarks. In most instances, the Examiner determines that a mark is associated when there is a common element or word contained in the marks. In order to overcome this objection, there are normally three options available:

  • Prepare new assignment documentation for execution by the parties against the associated trademarks which were not subject to the assignment.
  • File a petition with the trademark office in an effort to “break the association” between the trademarks, arguing that the trademarks should not be “associated” and recordal should proceed uninhibited.
  • Commence cancellation proceedings against the associated trademarks.

(iii) change in local practice:  the requirements of local trademark practice shift on a fairly regular basis which may result in requests for additional forms, Powers of Attorney, Affidavits or other documents to be submitted with the assignment documents. In some instances, new assignment documents are required altogether.

(iv) missing/lost documents:  It is not uncommon for Trademark Offices to temporarily misplace or lose entirely a complete set of assignment documents, especially in less sophisticated jurisdictions. Regardless of fault, a new set of assignment documents can be executed by the parties and submitted to the Trademark Office or in certain cases, certified copies will be accepted.

(v)change of address:  the address of the Seller as reflected on the official registry differs from that contained in the assignment document. Accordingly, a Declaration of Change of Address must be filed in order to overcome this objection and allow the recordal of the assignment to proceed.

(vi) license recordal or registered user entry in name of Seller:  when the Seller is recorded as a licensor/licensee or registered user, the Examiner may require evidence of the novation of the license or registered user agreement to reflect that the Seller is no longer the licensor or licensee of the mark.

Regardless of the type of official action which may issue, one dominant theme is clear. Officers (or former officers) of both the Buyer and the Seller should be available to execute whatever additional documentation is requested by the local Trademark Office to complete the transfer of “record title” to the Buyer.

(e) Proof of recordal:  In most jurisdictions, proof of recordal of an assignment, merger or change of name is issued within six months to one year. In other jurisdictions such as India or Italy, proof of recordal may not be issued for approximately 4-5 years. In any event, when the proof of recordal is received, this document should be carefully reviewed to determine the following:

the name and address of the new owner is correctly reflected on the certificate;

the date of the recordal is stated;

the correct application and/or registration numbers are recited on the certificate.

E. FILING AND RECORDAL OF CONFIRMATORY DOCUMENTS TO RECORD A MERGER AND/OR CHANGE OF NAME

Although many of the issues discussed above pertaining to recordal of

confirmatory assignment documents remain true for the recordal of a merger and/or change of name, such as the assessment of government fees on a per trademark basis, as a general rule, fewer documents need to be prepared and executed by the parties for recordal purposes. In many jurisdictions, recordal of a change of name and/or merger can be accomplished with the following documents:

(a) Power of Attorney: usually executed by the Buyer only;

(b) Certificate of Merger/Change of Name: issued by the appropriate Secretary of State’s office (if a U.S. corporation) or similar governmental authority outside the U.S.

Unlike an assignment, however, all assets of the combined companies pass to the new entity by operation of law and therefore, recordal of a merger/change of name must be recorded against all active trademark applications and registrations which stand in the name of the Seller at a particular Trademark Registry.

F. SECURITY INTERESTS

Increasingly, security interests in intellectual property and, in particular, trademarks, are becoming more and more common. Towards that end, perfection of security interests in trademarks worldwide is becoming more common. Recordal of security interests in trademarks is a well-established practice in only the most sophisticated jurisdictions and even there, similar to the United States, the law in this area is not well settled. However, for those jurisdictions outside the United States where security interests have been recorded at the Trademarks Registry, it may be necessary to seek the opinion of local counsel in order to determine whether release documentation prepared for recordal at, for instance, the USPTO, will be sufficient to release the security interest under local law.

(i)   Perfection of security interests in trademarks in the United States:  With respect to U.S. common law and U.S. State trademark registrations, Article 9 of the UCC would apply and the appropriate UCC-1 forms should be filed and perfected at the relevant County Clerk’s Office and/or Secretary of States office. With respect to federally registered rights, the landscape concerning perfection of security interests still remains unclear. While the Lanham Act makes no direct reference to recordation of security interests, the USPTO will accept and it is now common practice to record security interests in trademarks at the assignment division. At the very least, recordation at the USPTO provides constructive notice to subsequent purchasers for value.

(ii) What countries recognize perfection of security interests:  As the value

of intellectual property rights are more widely recognized now than ever before, more and more companies are placing a premium on the protection of these rights, including trademarks. Companies with substantial worldwide portfolios are increasingly offering not only their domestic trademark rights as security to finance a transaction, but increasingly, their international rights as well. Towards that end, secured parties would be well advised to seek perfection of these security interests at the trademark offices in several, if not all, of the jurisdictions in which the trademark security interest has been granted. However, at this time, only the most sophisticated jurisdictions recognize the creation of security interests in trademarks  and  offer a mechanism for perfection of same at the Trademark Office.

(iii) Will the security documents suffice to create and perfect the security interest in the relevant jurisdictions?  – Subsequent to identifying those jurisdictions which offer a mechanism for perfecting a security interest in trademarks, it is critical to determine whether the General Trademark Security Agreement or other trademark security documents will be accepted for recordal. While some jurisdictions will accept a standard security agreement, it may be necessary to effect certain amendments to the Agreement in order to create a valid security interest under local law. A common example of this would be changing the “governing law” provisions to that of the jurisdiction under which perfection is sought. In many instances, it may be necessary for the parties to execute several new trademark security agreements tailored specifically for creating and perfecting trademark rights in certain jurisdictions. Towards that end, it may be necessary to engage local counsel early to determine whether the Trademark Security Agreement will suffice for purposes of creating and perfecting a valid security interest in trademarks under local law.

(iv) Supplemental documentation to the Trademark Security Agreement  : In addition to amendment or possibly creating a new Trademark Security Agreement in compliance with local law, it is often the case that additional documents will need to be executed by the parties and submitted together with the Trademark Security Agreement. Such documents can include:

(1) Application forms; (2) Powers of Attorney; (3) Short-Form Security Agreements; (4) Commercial Security Agreements for filing at the municipal level (if necessary); and (5) Various other forms required under local trademark and/or commercial practice.

(v) Obtaining opinion letters from local counsel  : In order to make certain

that the secured party is not blindly undertaking the ministerial act of perfecting the security interest, it may be worthwhile to obtain a formal opinion letter of local counsel discussing some or all of the following points:

(1) whether any prior liens or encumbrances have been recorded against the trademark; (2) whether a valid security interest is created by the Trademark Security Agreement under local law; (3) whether the security interest is capable of being perfected at the local Trademark Office; and (3) subsequent to perfection at the Trademark Office, whether the security interest is capable of being enforced against third parties;

In what countries should perfection take place/cost assessment:  Simply

determining which jurisdictions recognize perfection of security interests in trademarks and identifying what supplemental documentation would be needed is not enough. A thorough cost-assessment of the value of the trademarks subject to the security interest may be worthwhile. In the end, it may not be worthwhile to proceed in a jurisdiction where notoriety or sales in the trademarks do not exist. Factors to consider in this determination are:

(1) The number of trademarks subject to the security interest; (2) The government fees in perfecting the security interest; (3) Local counsel fees in preparing an amended or new Trademark Security Agreement, supplemental documentation, opinion letters and handling the perfection of the security interests; (4) The value of the trademarks as determined by notoriety and/or sales in the products bearing the trademarks; (5) The sophistication of the jurisprudence in a particular jurisdiction; and (6) Other standard valuation benchmarks in determining the value of trademark rights.

(vii) time considerations:  In addition to cost considerations, time is also a factor when considering perfection of security interests abroad. While certain jurisdictions can typically record the security interest at the Trademark Office within 3-6 months, there are still many jurisdictions which typically require several years before recordal is officially reflected on the register. Furthermore, expedited recordal procedures are generally not in place. Therefore, in terms of obtaining the benefits of perfection by providing notice to third parties, proceeding in some of these jurisdictions may not be worthwhile.

(viii) events of default/enforcement procedures:  In the event of a default, trademark counsel should be aware of what steps must be taken in order to enforce the security interest and foreclose on the trademark assets. If the defaulting party is unwilling to assign rights in the trademark back to the secured party, the secured party may need to bring a court action under local commercial or trademark law.

The key to a successful Closing is, preparation, organization and anticipation. Anticipation results in no or few surprises at the Closing ceremony. Preparation leads to a more mechanical and faster process. Good organization ensures that every issue and step in the process is dealt with so that no open issues remain and all required documents are executed and delivered. Clients will generally be impressed by and grateful for a smooth and uneventful Closing process.

uspto.gov

  • Patent Laws, Regulations, Policies & Procedures
  • Manual of Patent Examining Procedure
  • Chapter 0300
  • Section 302

302 Recording of Assignment Documents [R-07.2015]

37 cfr 3.11  documents which will be recorded..

  • (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
  • (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
  • (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58  Governmental registers.

  • (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
  • (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24  requirements for documents and cover sheets relating to patents and patent applications..

  • (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
  • (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26  english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21  identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293   nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61  Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41  recording fees..

  • (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
  • (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
  • (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet  [R-10.2019]

37 cfr 3.28  requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31  Cover sheet content.

  • (1) The name of the party conveying the interest;
  • (2) The name and address of the party receiving the interest;
  • (3) A description of the interest conveyed or transaction to be recorded;
  • (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
  • (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
  • (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
  • (6) The date the document was executed;
  • (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
  • (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
  • (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
  • (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
  • (1) Indicate that the document relates to a Government interest; and
  • (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §  3.41(b) ).
  • (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
  • (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
  • (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
  • (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
  • (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
  • (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
  • (4) Indicate the date the joint research agreement was executed.
  • (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

  • (A) The name of the party conveying the interest;
  • (B) The name and address of the party receiving the interest;
  • (C) A description of the interest conveyed or transaction to be recorded;
  • (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
  • (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
  • (F) The date the document was executed; and
  • (G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

  • (A) assignment;
  • (B) security agreement;
  • (C) merger;
  • (D) change of name;
  • (E) license;
  • (F) foreclosure;
  • (H) contract; and
  • (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

Form PTO-1595. Recordation Form Cover Sheet for Patents

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27  mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

  • (A) an identified application or patent number;
  • (B) one cover sheet to record a single transaction; and
  • (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

  • (A) Assignments submitted concurrently with newly filed patent applications;
  • (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
  • (C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

  • (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4  Nature of correspondence and signature requirements.

  • (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
  • (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
  • (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
  • (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
  • (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
  • (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
  • (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
  • (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

  • (A) an identified application or patent number; and
  • (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

  • 301.01-Accessibility of Assignment Records
  • 302.01-Assignment Document Must Be Copy for Recording
  • 302.02-Translation of Assignment Document
  • 302.03-Identifying Patent or Application
  • 302.04-Foreign Assignee May Designate Domestic Representative
  • 302.05-Address of Assignee
  • 302.06-Fee for Recording
  • 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
  • 302.08-Mailing Address for Submitting Assignment Documents
  • 302.09-Facsimile Submission of Assignment Documents
  • 302.10-Electronic Submission of Assignment Documents
  • 303-Assignment Documents Not Endorsed on Pending Applications
  • 304‑305-[Reserved]
  • 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
  • 307-Issue to Non-Applicant Assignee
  • 308-Issue to Applicant
  • 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
  • 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
  • 311-Filing of Notice of Arbitration Awards
  • 312-[Reserved]
  • 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
  • 314-Certificates of Change of Name or of Merger
  • 315-Indexing Against a Recorded Certificate
  • 316-[Reserved]
  • 317.01-Recording Date
  • 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
  • 317.03-Effect of Recording
  • 318-Documents Not to be Placed in Files
  • 319-[Reserved]
  • 320-Title Reports
  • 321‑322-[Reserved]
  • 323.01(a)-Typographical Errors in Cover Sheet
  • 323.01(b)-Typographical Errors in Recorded Assignment Document
  • 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
  • 323.01(d)-Expungement of Assignment Records
  • 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
  • 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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Assignments overview and pitfalls to beware!

03 December 2012

Ian Starr

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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Trademark Assignment

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Trademark Assignment

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A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.

This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.

This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.

How to use this document

This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.

This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.

Once the form is complete, the parties can undertake the following steps:

1) Sign and execute the form in front of a notary (both parties)

2) Have the notarization completed

3) Record the Trademark Assignment with the United States Patent and Trademark Office

Applicable law

Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).

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A guide to help you: How to Register A Trademark

Other names for the document:

Agreement to Assign Brand, Assignment for Trademark, Brand Assignment, Intellectual Property Assignment Agreement, Logo Assignment

Country: United States

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confirmatory deed of assignment trademark

TMEP 501.01(a): Assignability of Intent-to-Use Applications

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 501 : Assignment of Marks 501.01 : Assignability of Marks in Applications and Registrations

Previous: §501.01 | Next: §501.01(b)

501.01(a)    Assignability of Intent-to-Use Applications

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b) , the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)    or a statement of use under 15 U.S.C. §1051(d) ), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  Section 10 of the Trademark Act, 15 U.S.C. §1060 ; 37 C.F.R. §3.16 .

The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent "trafficking" in marks.

As a general rule, the United States Patent and Trademark Office ("USPTO") does not investigate or evaluate the validity of assignments.  Therefore, the examining attorney must issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:

  • (1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
  • (a) The assignment is executed before the filing of an allegation of use;
  • (b) The applicant submits the assignment document for inclusion in the application record in the Trademark database, and not just to the Assignment Recordation Branch; and
  • (c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

The examining attorney should not require the submission of assignment documents to determine compliance.

If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to resolve the issue.  This statement may be entered through an examiner’s amendment.

The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application void, and any resulting registration must be cancelled. Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); cf. Amazon Techs., Inc. v. Wax, 95 USPQ2d 1865, 1872 (TTAB 2010) (finding "the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application is more in the nature of 'relinquishment' of ownership rights by one joint owner than a true 'assignment' to a different legal entity, and, thus, it is not prohibited under §10 of the Trademark Act").

  • Practical Law

Transferring intellectual property rights: avoiding the pitfalls

Practical law uk articles 2-504-4154  (approx. 11 pages).

  • What IPR are from a legal perspective.
  • The practicalities and consequences of the registration of registrable IPR transactions, and the due diligence to be conducted.
  • How to identify the relevant IPR to be transferred.
  • How to document the transfer.
  • Some important issues concerning liability arising on the transfer of IPR.

Legal nature of IPR

Confidential information, community rights, registering assignments of ipr, administrative and costs issues.

  • It was not practicable to register the assignment within the six-month time limit.
  • The assignment was registered as soon as practicable thereafter.

Protecting mortgages and charges

Registered rights due diligence.

  • Carry out an initial search of the register to check that the seller is the registered proprietor. Check for any earlier assignments to that seller and investigate thoroughly any such assignments and the circumstances surrounding them. If there are any such assignments, consider taking an assignment of the seller's causes of action for failure to deliver good title against his own seller (if any still remain).
  • Carry out a second search on the morning of completion as the IPO/OHIM update their registers at midnight following each working day.
  • Register the transaction on the day it completes, wherever possible, or as soon as possible thereafter.
  • Require the seller to assign with full title guarantee (see " Liability " below).

Identifying the relevant IPR

  • Identify the relevant registered IPR which are to be transferred.
  • Produce a conceptual definition of the non-registered IPR which are to be included in the sale, such as "all the company's know-how (whether recorded or not) and documentation relating to the process of manufacturing xyz".
  • Identify which (if any) of the IPR being transferred will still need to be used by the seller or its group after the transaction has taken place, and determine how such access is to be secured (this will usually require some form of licence back).
  • Identify which IPR are not going to be transferred to the buyer, and consider whether or not to write to the buyer explaining precisely which IPR are not going to be included in such a sale and why. This can stop arguments occurring later as to what was meant to be included or excluded, and should also make an action for rectification (correction) of the assignment agreement much more difficult for the buyer to win.
  • Properly instruct the seller's negotiating team and lawyers as to the matters above.

Documenting the transaction

Assigning by deed, method of assignment in a sale and purchase agreement, what should be assigned in an spa, country-specific agreements, patent attorney files.

  • The person disposing of the IPR has the right to dispose of them.
  • The person disposing of the IPR will do all he reasonably can do, at his own cost, to give the assignee the title he purports to give ( section 2(1), 1994 Act ).
  • Charged or encumbered the IPR with any charge or encumbrance, which still exists at the time of the present disposition.
  • Granted any third party rights in relation to the IPR, which still subsist at the time of the present disposition.
  • Allowed anyone else to do so.

Excluding liability

Sale of goods act 1979, mortgages and charges of ipr.

  • An outright assignment of the legal title in the IPR to the lender.
  • A right of redemption; that is, the right to have the legal title transferred back to the borrower once repayment and other obligations have been fulfilled.
  • Pending exercise of the right of redemption by the borrower, some form of licence back from the lender to the borrower to enable the borrower to use the IPR in its business.
  • The charging clause.
  • A transfer mechanism to allow the transfer of the IPR in the event of default.
  • A range of negative obligations on the borrower not to grant conflicting security or other interests in the charged IPR.

Practicalities of assignment: an overview

Problems with the ipr registration system.

  • Trade Marks
  • Confidentiality
  • United Kingdom

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Trademark assignment agreements: managing rights post-brexit.

person signing a trademark assignment

Since the UK’s departure from the EU, there has been a significant rise in the number of trademark assignment recordals against UK registrations taking place as EU trademark owners are now required to manage these rights separately, says Trademark Paralegal Megan Taylor.

In order for transfers of ownership to be recorded, businesses must provide a copy of the relevant document assigning their ownership, to ensure that a valid transaction has taken place under the laws of England and Wales. It is important to ensure the transfer is a valid transaction as the mark could be the basis of, or subject to, future disputes where questions around its validity could be raised and result in a possible loss of costs. 

What makes a transaction valid in the UK?

Despite s.24(3) of the Trade Marks Act 1994  (TMA) stating that a trademark assignment is considered effective if it is in writing and signed on, or behalf of, the assignor (or their representative), there are other laws relating to the transfer of property which must be considered; for example, statutes that pre-date the TMA. One such statute is the Law of Property (Miscellaneous Provisions) Act 1989 which sets out the requirements for a valid Deed for transfers of ownership between individuals. Similarly, the Companies Act 2006 provides guidance in relation to Deeds executed by a company.

It is also important to note that while EU member states can rely on their codified national laws for transferring property within the EU, the UK also incorporates Common Law into its judicial system. The relevant laws here being the Law of Contracts.

Deeds v Assignments

When ownership of a trademark registration is transferred as part of a larger transaction, a copy of the relevant extract of the larger agreement is sufficient to proceed with the recordal. 

However, in other instances, there may be no formal transaction in place or a confirmatory document may be required to simplify or clarify the transfer of any IP right specifically. In these cases, a separate trademark assignment (or other IP assignment) document should be drafted for execution by the parties.

In the UK, there are two types of document that enable the transfer of ownership of property – a deed of assignment and an assignment agreement, the latter also being known as a contract. While both documents are typically in writing, contain a title to confirm the document type and express the intentions of both parties, one of the most distinguishable requirements for a deed is the execution. In addition to the document being signed by both parties, for a deed to be effective both signatures must also be fully witnessed owing to there being no consideration.

Alternatively, the relevant parties may have an assignment agreement drafted. The laws governing contracts in the UK derive from the courts and are therefore formed under Common Law. In order to be a valid contract, there must be four main elements: an offer, acceptance of that offer, an intention to create legal relations and consideration (in other words, what each party gains from the contract). When it comes to formalising this contract, it is vital that the consideration is contained in the document, even if the sum is £1. If this is not included, the document cannot be treated as a valid contract.

Change of name requirements 

Furthermore, it should be noted that where a company number or legal status of a business has changed as the result of a change of name, the transaction should be recorded as an assignment and not a change of name. This is due to the fact that the entity that owns the mark has changed and is no longer the same entity as the prior owner. However, there is no need to evidence this change with a Deed or Agreement to record this at the UKIPO, as a commercial extract will suffice.

Key points to consider

When reviewing ownership portfolios or selling IP post-Brexit, it is important to consider the following:

  • Is there consideration?  Determine whether you are transferring the property as a Deed or under an Agreement – different document types may be more beneficial depending on the circumstances of the transaction.
  • Seek advice before executing.  Our local associates can confirm whether the document is compliant with national laws. With our reach, we may also be able to provide a suitable single document to cover multiple jurisdictions, saving you and/or your client(s) a huge amount of associated costs.
  • If unsure, just ask.  We are at your disposal and happy to help facilitate easy execution, provide legal certainty, and save time in the long run.
  • Take caution with local legal wording.  Even if something is titled a ‘Deed’, it is not always the case.
  • Be careful not to exclude crucial details.  For example, something seemingly insignificant missing from an assignment document can render the whole agreement invalid. In the UK, even the phrase “ In consideration of £1 (one Pound Sterling) the receipt of which is hereby acknowledged ”, or a “peppercorn” as it is nicknamed, as a metaphor for a very small cash payment or other nominal consideration, used to satisfy the requirements for the creation of a legal contract.

Get in touch with our UK Trademark experts for further advice on how to manage trademark assignments post-Brexit.

Megan Taylor is a Trademark Paralegal and Luke Portnow is a Trademark Attorney at Novagraaf in the UK.

Contact us for more information

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Trademark assignment agreement.

Jump to section.

A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the terms and conditions of the transfer.

A properly executed trademark assignment agreement can help ensure that the new owner has full legal rights to use, sell, or license the trademark while protecting the interests of the original owner. This type of agreement is commonly used in business transactions such as mergers and acquisitions, where trademarks are often valuable assets.

Essential Elements of a Trademark Assignment Agreement

A trademark assignment agreement in California must meet certain requirements to be legally binding and enforceable. Here are some of the essentials of a trademark assignment agreement in California:

The agreement must identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement must clearly state that the current owner (assignor) is transferring ownership of the trademark to the new owner (assignee). It should also state that the assignor has the legal right to transfer trademark ownership.

The agreement should specify the consideration that the assignee provides in exchange for transferring the trademark. It can be a monetary payment or other valuable consideration.

The agreement should contain representations and warranties by both the assignor and assignee, such as the assignor's ownership of the trademark and the assignee's ability to use and exploit the trademark.

The agreement should include a provision for the assignment of goodwill associated with the trademark, which refers to the intangible value of the trademark's reputation and customer loyalty.

The agreement may also include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others.

The agreement must be signed by both the assignor and assignee and should include the date of execution.

Overall, a trademark assignment agreement in California should be clear, concise, and comprehensive and accurately reflect both parties' intentions.

Importance of a Trademark Assignment Agreement

A trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. Here are some reasons why a trademark assignment agreement is important:

A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark.

A trademark is a valuable asset representing a business's goodwill and reputation. A properly executed trademark assignment agreement helps to protect the assignee's investment by ensuring that they have the legal right to use and exploit the trademark.

A trademark assignment agreement can help avoid confusion and disputes over trademark ownership. It provides a clear record of the transfer of ownership and can be used as evidence in case of any legal disputes.

A trademark assignment agreement can enable the assignee to license the trademark to others. It can be a valuable source of income for the assignee and help increase the trademark's value.

A trademark assignment agreement is often used in business transactions such as mergers and acquisitions, where trademarks are a valuable asset. It helps to ensure that the transfer of ownership is legally valid and provides a clear transaction record.

Overall, a trademark assignment agreement is an important legal document that helps to protect the interests of both the assignor and assignee. It provides a clear record of the ownership transfer and can help avoid confusion and disputes over ownership of the trademark. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

confirmatory deed of assignment trademark

Benjamin W.

confirmatory deed of assignment trademark

Common Mistakes to Avoid in Trademark Assignment Agreement

When drafting or executing a trademark assignment agreement in California, several common mistakes should be avoided to ensure the agreement is legally valid and enforceable.

The agreement should identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement should include all parties involved in transferring the trademark, including any successors or assigns. Failing to include all parties can result in a lack of clarity over who owns the trademark.

The agreement should specify the assignee's consideration in exchange for the trademark transfer. If the consideration is not accurately described, the agreement may be challenged as unenforceable.

The agreement should include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others. Failing to address these rights can result in a lack of clarity over the assignee's legal rights to use and exploit the trademark.

The agreement must be signed by both the assignor and assignee and should include the date of execution. Failing to obtain proper signatures can result in a lack of clarity over whether the transfer of ownership is legally valid.

Trademark law can be complex and nuanced. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Overall, it is important to carefully draft and execute a trademark assignment agreement in California to ensure it is legally valid and enforceable. Avoiding these common mistakes can help to ensure that the agreement accurately reflects the intentions of both parties and protects their legal rights.

Key Terms for a Trademark Assignment Agreement

  • Trademark: It is a recognizable sign, design, or expression that identifies and distinguishes the source of a product or service from those of others.
  • Assignor: The assignor is the party currently owning the trademark and transferring ownership to another party through the trademark assignment agreement.
  • Assignee: The assignee is the party acquiring ownership of the trademark through the trademark assignment agreement.
  • Goodwill: Goodwill is the intangible value associated with a trademark built up through the use and reputation of the mark in the marketplace.
  • Consideration: It refers to the compensation or value exchanged between the assignor and assignee as part of the trademark assignment agreement. This can include monetary payment, goods or services, or other forms of value.

Final Thoughts on a Trademark Assignment Agreement

In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.

When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.

Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.

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Assignments and transmissions

Intellectual Property Office of New Zealand

Practice guidelines

In this practice guideline.

This document provides guidelines on the assignment or transmission of a trade mark application or a trade mark registration under the Trade Marks Act 2002. These guidelines do not constrain the judgement and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.

1. Introduction

Assignment or transmission of a trade mark is the process by which ownership of a registered trade mark or a trade mark application may be passed from one party to another. Sections 81 and 82 of the Trade Marks Act 2002 (“the Act”) allow for the assignment or transmission of a trade mark application or registration.

Part 16 of the Trade Marks Regulations 2003 (“the Regulations”) prescribe the requirements for a Commissioner’s Certificate and for assigning or transmitting a trade mark application or registration and incorporate regulations 143 to 146 of the Regulations.

IPONZ must be advised of a change of ownership as soon as it occurs. This is to ensure that assignments and transmissions of title that have been effected in the marketplace are entered in the register at the earliest opportunity, so that the register is an accurate reflection of the real business situation.

Change of name

Please note, if the change in owner relates solely to a change of name for the applicant requests of this nature must be made as a change of name, located under ‘maintain client’.

The Office will decline any assignment request that relates to the owner of the mark changing its name.

2. The application process

An application for a Commissioners Certificate or for an assignment or transmission of a trade mark must be submitted through the online case management facility.

Examples of acceptable documentation to support the claim can be found in our information about changing ownership . The onus is on the applicant to ensure the documentation is true and correct. 1

2.1 Filing method

An application must be submitted through our online case management facility .

IPONZ online services provide secure and immediate acknowledgement of your filing.

2.2 Prescribed fees

There is no fee for an assignment or transmission of a trade mark application or registration.

3. Assignments and transmissions

A trade mark application or registration may be assigned or transmitted in respect of all or some of the goods and services for which it is either registered or for which registration is sought. 2

An assignment or transmission may be full or partial, that is, in respect of all or only some of the goods and/or services in respect of which the trade mark is registered or registration of the trade mark is sought.

If a transmission or assignment includes all goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “full”. These requests are filed as a “change ownership” request, located under the “maintain a trade mark” option in the online services. Read about how to request for change ownership .

If a transmission or assignment includes only some of goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “partial”. These requests are filed as a “Division/Partial Change of Ownership” request, located under the “maintain a trade mark” option in the online services.

The Commissioner has no discretion in respect of the recordal of an assignment or transmission. If the application complies with the formal requirements and is supported by a document that establishes title to the trade mark, the Commissioner must record the change of ownership.

3.1 Assignment of a trade mark application

A person to whom a trade mark is assigned or transmitted must apply to the Commissioner to register their title to the application if assignment or transmission is before the actual date of registration.

An application for the assignment or transmission of a trade mark application must be submitted through the online case management facility and contain the following information: 3

  • The name of the assignor of the trade mark;
  • If the assignor has an agent, the agent’s name;
  • The name, address for service in New Zealand or Australia, and business or residential address of the assignee;
  • If the assignee has an agent, the agent’s name ;
  • The application number of the trade mark;
  • A description or representation of the trade mark;
  • Whether the assignment or transmission was full or partial;
  • The date on which the assignment or transmission became effective;
  • The class or classes that were assigned or transmitted;
  • In the case of the assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted;
  • A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that are proof of the assignee’s title to the trade mark; for example a Deed of Assignment [PDF, 117 KB] , Sales and Purchase Agreement, or other documentation supporting the transfer in title.

The Commissioner will, on proof of the person’s title:

  • accept the change of the applicant on the trade mark application;
  • on completing the assignment, confirm with the applicant that the assignment or transmission has been completed.

3.2 Assignment of a trade mark registration

An application for the assignment or transmission of a trade mark registration must be submitted through the online case management facility and contain the following information: 4

  • The registration number of the trade mark;
  • register the assignee as the owner of the trade mark registration in relation to the goods or services in respect of which the assignment or transmission has effect; and
  • on completing the assignment, confirm with the applicant that the assignment or transmission has been completed

3.3 Proof of title

An assignment of a registered trade mark requires proof of title to the satisfaction of the Commissioner.

A copy of the document of assignment or transmission is acceptable as proof of the assignee’s title to the trade mark and does not need to be certified. The Office does not accept original copies and is not able to guarantee their return to their correct owners.

The proof of title document should show the full name and address of both parties, the trade mark being transferred and should be signed and dated at least by the current owner.

Where a partial assignment or partial transmission is sought, the proof of title document should also list the goods and services that are being assigned or transmitted. This must agree with the list stated in the application to record.

Please note, the Office accepts redacted versions of documents as long as the parties, intent of the agreement and the trade marks being assigned are clear.

3.3.1 Amalgamations

Amalgamations of companies are actioned as envisaged by the Companies Act 1993. Proof of ownership can be achieved by providing to the Commissioner a copy of the Certificate of Amalgamation issued by the Registrar of Companies as evidence of the amalgamation.

3.3.2 Company mergers

Where a company merger has occurred, the applicant can provide proof of ownership with a copy of the Certificate of Merger.

3.4 Authorisation of agent

An authorisation of agent is generally not required for an agent to record an assignment or transmission on behalf of the assignee (new owner). However, the commissioner retains the discretion to require an Agent Authorisation under certain circumstances.

Where the agent wishes to be recorded as the agent on record for the assigned trade mark cases it is necessary to upload either of the following:

  • An authorisation of agent; or
  • A letter signed by the agent confirming they have been asked to represent the assignee (new owner).

Where the agent wishes to record the assignment or transmission, but does not wish to record themselves as the agent on record for the assigned trade mark cases, it is important that they remove themselves from the agent field within the record change of ownership screen in the case management facility.

3.5 Bona Vacantia

Where 5 a company has been removed from the New Zealand Companies Register and its’ trade mark registration was not assigned (whether by deed or by operation of law) to another person immediately prior to the company’s removal, the registration is prima facie bona vacantia and vests in the Crown by virtue of section 324 of the Companies Act 1993. As the owner of the trade mark registration no longer exists as a legal entity, it is not able to assign the ownership of the trade mark registration to an interested party.

Where the ownership of the trade mark has vested in the Crown, it is possible to request the Crown to transfer ownership of the registration. The Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property. In particular, The Treasury’s Legal Group advises on such requests.

To record such an assignment, IPONZ requires:

  • A completed application to record a transmission under s82(2) of the Act, to account for the transmission of the registration from the Company to the Crown and from the Crown to the interested party; and
  • Supporting documentation including copies of any documents and evidence required by Treasury.

The Treasury will advise of any documents and evidence required to action a bona vacantia request on a case by case basis. However, in relation to the assignment of a trade mark to an interested party, the following documents may be required by The Treasury:

  • setting out the facts about the registration;
  • setting out the circumstances surrounding the removal from the register without first transferring the registration; and
  • deposing to the effect that the Company held the registration in its own right and not on trust for any other body corporate or any other person
  • An application by an interested party requesting the Crown to deal with the matter as bona vacantia pursuant to section 324 of the Companies Act, together with an indemnity from the appropriate person (usually the interested party) in favour of the Crown indemnifying the Crown in respect of all or any liability that may be incurred by the Crown in respect of all actions taken in transferring the ownership of the trade mark registration.
  • A letter from the Companies Office certifying that the company was dissolved, the section of the Companies Act under which the company was removed from the register, the date of removal and the reference to its publication in the Gazette (if this was done). The certificate should also state that the company has not been restored to the Register.
  • A photocopy of the extracts from the Trade Marks Register duly certified as being a true copy of the originals.
  • Written consent from the Shareholder/s at the time the company was removed, consenting to the transfer of the ownership of the trade mark registration to the interested party.

Please note that the Crown is entitled to recover their costs and may require payment in advance. Any person wishing to pursue this option is expected to deal directly with The Treasury. For more information, email [email protected] .

Last updated 30 November 2017

  • 1 See section 185 of the Trade Marks Act 2002.
  • 2 See section 82(1) of the Trade Marks Act 2002.
  • 3 See regulation 146 of the Trade Marks Regulations 2003.
  • 4 See regulation 146 of the Trade Marks Regulations 2003.
  • 5 Practice Guideline Amendment 2007/03, Intellectual Property Office Newsletter, 1 August 2007.

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Trademarks in Russia

confirmatory deed of assignment trademark

Alexander Nesterov

Partner, Trademark Attorney

confirmatory deed of assignment trademark

Sergey Medvedev

Partner, Trademark & Design Attorney, Ph.D., LL.M. Head of Legal Department

Legal framework

Domestic law.

What is the primary legislation governing trademarks in your jurisdiction?

The Russian Civil Code, and in particular Part IV, is the primary legislation for trademarks, among various types of intellectual property. The code governs the prosecution, exploitation, licensing and enforcement of trademark rights. Other local administrative regulations, federal laws and procedural codes support the trademark protection and enforcement regime.

International law

Which international trademark agreements has your jurisdiction signed?

Russia has signed the following international trademark agreements, which are in force:

  • the Paris Convention for the Protection of Industrial Property (Paris Convention) (1883);
  • the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) (1891);
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (1989);
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
  • the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs) (1994);
  • the Trademark Law Treaty (1998); and
  • the Singapore Treaty on the Law of Trademarks (2009).

Which government bodies regulate trademark law?

Trademark prosecution goes through the Federal Service for Intellectual Property (RUPTO). RUPTO is under the jurisdiction of the Russian Ministry of Economic Development.

The following bodies are in charge of trademark enforcement:

  • anti-monopoly bodies, including the Russian Federal Anti-monopoly Service;
  • the customs and police authorities;
  • the prosecutors’ offices; and
  • the courts, including the courts of general jurisdiction and the commercial courts.

Rights and protection

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Russia is a first-to-file country. Legal entities or individual entrepreneurs who first apply for registration of a trademark enjoy the priority right to obtain trademark registration. Therefore, it is essential to file trademark applications in Russia without delay.

It is not necessary to use the mark before applying for registration, and proof of use is not required when the trademark application is filed.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Trademark rights stem from registration in Russia. Unregistered marks or marks-in-use are not protected, unless they have obtained an official 'well-known' status under a special procedure through RUPTO.

In certain instances, unregistered marks (eg, trade dresses, logos, three-dimensional marks) can enjoy unfair competition and/or copyright protection. Trade names (known as ‘commercial designations’) can also be protected and enforced in Russia.

How are rights in unregistered marks established?

No exclusive rights are given to unregistered mark users. Rights available against unfair competition or copyright infringement are usually established through prior, long-standing use, consumers’ association and reputation. Trade names must be distinctive and known amongst customers within a certain territory of use. 

Are any special rights and protections afforded to owners of well-known and famous marks?

There is a special procedure for the recognition of trademarks as well known. Unlike in many other countries, in Russia a trademark is not granted well-known status as a result of court proceedings and litigation. In order for the mark to be considered a well-known trademark, a request must be filed with RUPTO.

A well-known trademark will generally be granted the same legal protection as an ordinary trademark. Nevertheless, a well-known trademark also provides its owner with the following important advantages:

  • the legal protection of the mark is not time-limited;
  • protection extends to goods or services other than those for which the mark is recognised as well known if the third party use is likely to be associated by consumers with the owner of the well-known trademark, and may affect the owner’s legitimate interests;
  • protection of a well-known mark may start from the period that predates the filing of the request for recognition of the mark as well known; and
  • the commercial value of a well-known trademark is higher than that of an ordinary trademark.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign national trademark registrations are not recognised in Russia. However, as a signatory to the Madrid Agreement and the Madrid Protocol, Russia grants protection to trademarks registered under the Madrid system.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

As Russia is a first-to-file jurisdiction, trademark registration is of the utmost importance for its owner. Generally, trademark registration provides the registrant (trademark owner) with the legal capacity of trademark use, disposal (eg, licensing) and enforcement. Trademark registration can afford other benefits, such as customs recordal. Trademark registration may prevent a similar/identical mark from being registered in the name of a third party.

Who may register trademarks?

Legal entities or individual entrepreneurs may register trademarks.

What marks are registrable (including any non-traditional marks)?

Any designations, including – but not limited to – verbal, pictorial, combined, three-dimensional ones, and other marks or their combinations, may be registered as trademarks. A trademark may be registered in any colour or colour combination, or just in black and white.

In addition, colour marks (either as individual colours or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion/animation marks, taste marks and other non-traditional marks may be registered in Russia, but their registrability depends on their distinctiveness, which may be:

  • inherent, deriving from the distinctive features of the mark; or
  • acquired, through intensive use in Russia.

Can a mark acquire distinctiveness through use?

Registration of a mark that is lacking distinctiveness is not permitted. However, it is possible to obtain trademark registration based on the acquired distinctiveness of the mark through its intensive (pre-filing) use in Russia. 

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Examination of trademark applications consists of a formal examination and, thereafter, a substantive examination based on absolute and relative grounds allowing to determine whether the mark filed is inherently registrable, and whether it is confusingly similar to third parties’ pending applications and/or registrations.

Are collective and certification marks registrable? If so, under what conditions?

Collective marks

The law provides for registration of collective marks. A ‘collective mark’ is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise.

When filing an application for registration of a collective mark, it is imperative to submit by-laws of the collective mark containing the rules for the use of the collective mark. These rules must indicate the name of the association entitled to register the mark in its name, the list of enterprises entitled to use the mark, the purpose of registration of the mark, the list of goods and description of their common characteristics (relating to quality or otherwise), the conditions of use of the mark and the sanctions for violation of such rules.

The names of the enterprises entitled to use the mark and an extract from the rules relating to the common characteristics of the goods for which the mark is registered will be mentioned in the publication of registration of the collective mark in the RUPTO’s Official Bulletin .

The registration holder must inform the RUPTO of any amendment to the rules of use of the mark. Any interested person may apply to the Russian IP Court for the total or partial cancellation of the registration of a collective mark if the mark is used in relation to goods not having common qualitative or other common characteristics.

Collective marks cannot be assigned or licensed to third parties.

Collective marks and applications for the registration of a collective mark may be converted respectively into trademarks or trademark applications.

Certification marks

Certification marks may also be registered. However, the registration procedure for this type of marks is quite different from that used for trademarks.

In particular, a legal entity that created its own voluntary system of certification is entitled to get registered both the system and the certification mark identifying this system. The registration can be implemented by way of filing an application with the Russian Federal Service for State Standardisation.

Under the existing rules, a certification mark must be distinctive and visually perceivable. Trademarks may not be used as certification marks. However, a certification mark can be registered as a trademark if it meets the general registrability requirements and is not in conflict with third parties’ rights.

Registered certification marks are entered into a special state register, which exists separately from the RUPTO Register of Trademarks.

Filing and registration

Filing procedure.

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Foreign applicants must be represented by a Russian trademark attorney registered with the RUPTO. Therefore, in order for an application to be filed in the name of an entity residing outside Russia, such entity must appoint a Russian trademark agent to represent the company in all trademark prosecution proceedings.

The power of attorney can be submitted independently from the trademark application, but filing it later may delay the examination. That said, there are neither strict deadlines for filing the power of attorney with the RUPTO, nor a late filing fee.

A power of attorney should be issued by the applicant and signed by the duly authorised person with an indication of that person’s name and position (title). The date and place of signature should be indicated as well.

Neither notarisation nor legalisation of the power of attorneys is required.

What information and documentation must be submitted in a trademark registration application?

The following information and documentation shall be included in the trademark application:

  • the applicant’s name and address;
  • a list of goods and/or services (in accordance with the Nice Classification) for which a trademark is to be registered. A class heading does not automatically protect all the goods/services included in the corresponding class;
  • one electronic print-out of the trademark of good quality;
  • the power of attorney (although as noted above, the power of attorney can be submitted after the trademark application); and
  • a certified copy of the first (home) application (in case of a priority claim under the Paris Convention).

What rules govern the representation of the mark in the application?

The representation of the mark in the application is governed by Decree 482/2015 of the Ministry of Economic Development.

Are multi-class applications allowed?

Multi-class trademark applications are allowed.

Is electronic filing available?

Electronic filing is available. In case of non-electronic filing, the official fees increase by 30%.

What are the application fees?

Formal examination (in one class) is RUB2,450 and RUB700 for each additional class over five.

Substantive examination (in one class) is RUB8,050 and RUB1,750 for each additional class over one.

How are priority rights claimed?

A priority claim made under the Paris Convention must be accompanied by a certified copy of the first (home) application. The filing particulars should correspond to those stated in the home application. The home application can be submitted after filing an application under the Paris Convention with the RUPTO, but no later than three months after filing with the RUPTO. This term cannot be extended. Split-priority is not possible in Russia.

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Word, graphic and combined trademark searches are available through the RUPTO. The searches are not required before filing, but are strongly recommended in order to determine the availability and registrability of designations.

The official fee for a standard one-week word search is RUB14,160 for one class and RUB3,540 for each additional class.  

Examination

What factors does the authority consider in its examination of the application?

The application process involves a formal examination followed by a substantive examination.

The formal examination is conducted within a month of filing. The examiner checks both the presence in the application of the requested documents and their compliance with the established requirements. If all formal requirements are met, then the substantive examination will start. Otherwise, the application will be rejected.

Does the authority check for relative grounds for refusal (eg, through searches)?

A trademark application may be rejected either based on absolute or relative grounds, or both on absolute and relative grounds.

The relative grounds for refusal include:

  • identity or similarity to the extent of confusion with prior trademarks (both registrations or applications) owned by third parties in relation to similar goods or services;
  • identity or similarity to the extent of confusion with well-known marks; and
  • identity or similarity to the extent of confusion with third parties’ industrial designs, appellations of origin, company names or commercial designations.

A trademark may also be refused protection if it incorporates, as elements of the trademark, protected distinguishing features of other parties (and confusingly similar signs), as well as copyrighted works owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons and industrial designs owned by third parties.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Following the substantive examination, the applicant is notified of any shortcomings, along with an invitation to submit arguments and proofs to remedy the issues identified. The examiner will take the applicant’s arguments into account when a decision is taken if these arguments are submitted within six months of the issuance of the said notification.

Can rejected applications be appealed? If so, what procedures apply?

An applicant may appeal any decision by the RUPTO with the Chamber of Patent Disputes of the RUPTO within four months of the decision issuance. The chamber’s decision may be further appealed to the Russian IP Court within three months.

Registration

When does a trademark registration formally come into effect?

A trademark registration becomes effective within one month of payment of the registration fee. 

What is the term of protection and how can a registration be renewed?

Trademark registrations are valid for 10 years from the date of filing of the application. Registrations can be renewed an unlimited number of times and each time for a 10-year period.

What registration fees apply?

The official fee for registration is RUB11,200 and RUB700 for each additional class over five; the official fee for issuance of the trademark certificate is RUB1,400.

What is the usual timeframe from filing to registration?

The timeframe from filing to registration is typically eight to 10 months.

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

There is no opposition system in Russia with respect to pending applications. However, the law provides for the following procedure:

  • the RUPTO should publish information on all trademark applications;
  • Third parties have the right to review all trademark documents on file and not only those included in the original trademark applications’ filings; and
  • Third parties have the right to submit to the RUPTO their observations against pending trademark applications before any official action is taken.

As examiners may take into account these observations during their examinations of any applications, these letters may be effective ways to ensure that prior rights are taken into consideration.  

What is the usual timeframe for opposition proceedings?

An invalidation action against a trademark based on prior rights can be brought. Specifically, within five years of publication of the information on trademark registration in the RUPTO’s Official Bulletin , the owner of prior trademark rights has an opportunity to file an invalidation action against the trademark registration with the Chamber of Patent Disputes of the RUPTO. In case of such an invalidation action, the trademark owner is notified accordingly and both parties are invited to attend hearings to consider the matter. Following the hearings, the Chamber of Patent Disputes of the RUPTO makes a decision – either:

  • rejecting the invalidation action and leaving the trademark in force; or
  • invalidating the mark in full or partially.

This procedure can take three to four months.

Are opposition decisions subject to appeal? If so, what procedures apply?

An invalidation decision from the Chamber of Patent Disputes of the RUPTO may be appealed within three months to the Russian IP Court.

Removal from register

Non-use cancellation.

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Any interested party may request the cancellation of a mark for non-use. A non-use action can be brought to the Russian IP Court, provided that the mark has not been used for three consecutive years preceding the established pre-trial procedure as outlined below.

Prior to filing a non-use claim, a party that is having a legitimate interest must send a letter to the trademark owner asking the latter either to surrender its trademark rights through the RUPTO or to assign the mark at issue to the claimant. The trademark owner has two statutory months to perform one of the options. If it fails to do so, the claimant has 30 days (following the expiration of the two-month period) to file the trademark non-use lawsuit with the Russian IP Court.

During the trial, the claimant must demonstrate a legitimate interest over the cancellation, while the trademark owner (respondent) must show use of the litigious mark by disclosing relevant documentary evidence. If the claimant succeeds, the trademark registration will be cancelled from the effective date of the decision made by the Russian IP Court.

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration may be invalidated by a decision of the Chamber of Patent Disputes of the RUPTO based on either absolute grounds (eg, misleading, lack of distinctiveness) or relative grounds (eg, prior rights). 

Who may file a request for revocation and what is the statute of limitations for filing a request?

An invalidation request may be filed by any interested party with the Chamber of Patent Disputes of the RUPTO. A request based on absolute grounds may be filed during the whole period of validity of the mark, and a request based on prior rights (ie, relative grounds) may be filed during five years following the publication date.

What are the evidentiary and procedural requirements for revocation proceedings?

 The evidentiary requirements depend on the grounds for invalidation. 

What is the appeal procedure for cancellations or revocations?

A decision of the Chamber of Patent Disputes of the RUPTO may be appealed to the Russian IP Court. The statutory term for appeal is three months.

In order to appeal, it is necessary to file a well-grounded civil lawsuit by submitting relevant arguments contesting the decision of the Chamber of Patent Disputes of the RUPTO. The Russian IP Court usually rejects new pieces of evidence that have not been submitted to the Chamber of Patent Disputes of the RUPTO, and limits its consideration to the documents/materials in the case file.

Unless further appealed, the duration of the trial with the Russian IP Court is typically three to five months.

What is the procedure for surrendering a trademark registration?

A voluntary trademark cancellation is possible; the mark owner must file the appropriate request directly with the RUPTO.

Enforcement

Jurisdiction.

Which courts are empowered to hear trademark disputes?

Trademark infringement disputes are generally heard by commercial courts of first instance located in the constituent parts of the Russian Federation. Their decisions may be appealed to the competent appellate courts. Further appeals (cassations) go to the Russian IP Court and the Economic Board of the Russian Supreme Court. A final, supervision appeal, if accepted, may be considered by the Russian Supreme Court, which is entitled to review and ascertain whether there is substantial breach in law enforcement.

Where a defendant is neither a business entity nor an individual entrepreneur, a court of general jurisdiction shall be chosen as the forum.

Trademark non-use disputes fall under the exclusive jurisdiction of the Russian IP Court, which hears such disputes on the merits in the first instance, while the Presidium of the Russian IP Court hears cassation appeals as the second instance court. Supervision appeals on such category of disputes may also be filed to the Economic Board of the Russian Supreme Court.

Trademark-related disputes may be a matter of unfair competition, which is prohibited in Russia. For example, the unfair acquisition and use of trademark rights is not permitted, and such issue may be considered by the Russian Federal Anti-monopoly Service, its territorial divisions,  and/or competent court.

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Russian trademark enforcement system is quite effective and well developed. Infringement of trademark rights may primarily be prosecuted through civil, administrative and criminal proceedings. A special quasi-judicial procedure based on unfair competition is also available. Lastly, cease-and-desist or demand letters have become a popular and obligatory pre-judicial remedy for companies wishing to sue infringers in court and claim damages or monetary compensation.

Civil proceedings

In the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:

  • injunctive relief (preliminary and permanent injunctions);
  • monetary relief (damages or monetary compensation);
  • seizure and destruction of counterfeit goods and related equipment/materials; and
  • publication of the court order.

Civil proceedings begin with a statement of claims (lawsuit), which is to be filed with the competent court. Usually, the residence/location of the defendant will establish the jurisdiction.

Russia does not support a discovery system; therefore, all evidence must be collected and secured in advance of the lawsuit. If it is not possible to obtain certain evidence from the infringer before the action, or the latter refused to disclose the evidence, the plaintiff may discover the evidence through the agency of the court during litigation.

Each party to a civil action is obliged to prove the asserted facts:

  • the plaintiff needs to prove that it is the registered trademark owner or registered exclusive licensee, and the defendant unlawfully uses the litigious trademark; and
  • the defendant needs to prove that there are legitimate grounds for trademark use that exempt it from liability.

The duration of civil proceedings will vary depending on the specificity of the case at issue. Typically, the decision of the first-instance court may be obtained within six to nine months, unless the infringer appeals the decision.   

Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues. 

Administrative proceedings

In accordance with the applicable (administrative) law, the unlawful use of a trademark shall entail an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.

Administrative proceedings usually begin with a complaint, which the trademark owner must file with the police or customs authorities, so that they can take action against the infringer. Accordingly, the Police or Customs will be the plaintiff, while the infringer will be the defendant in such type of action. In the course of administrative proceedings, the trademark owner may be engaged as an injured (third) party.  

An administrative action may take three to five months, unless the infringer appeals the decision.

Practically, an administrative procedure proves to be the most efficient and viable enforcement option to stop the importation of counterfeit goods into Russia. This measure is also applied when small stores offer for sale fake products on the internal market.

Criminal proceedings

The illegal use of a trademark may also lead to criminal prosecution.

In accordance with the applicable (criminal) law, the unlawful use of a trademark shall entail criminal liability only in the event that the infringer’s illegal activities cause substantial damages, or if trademark infringement is repeated.

The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment. In the course of a criminal procedure, the trademark owner is also entitled to file a civil lawsuit to recover damages.

Criminal proceedings vary tremendously in length, but often last one to two years to reach a first-instance decision.

In practice, the criminal procedure is used against large-scale counterfeit operations or gross infringers that manufacture and distribute counterfeit goods in large quantities all over the country.

Unfair competition actions

Trademark infringement may constitute an act of unfair competition. Passing off, as well as imitation of trade dress, are also treated as unfair behaviour, which may be prosecuted.

The Russian Federal Anti-monopoly Service, as well as its territorial divisions, are empowered to consider disputes related to unfair competition through a special quasi-judicial procedure.

This type of procedure starts on the basis of a complaint from the injured party (ie, trademark owner or its local distributor). Should the action on unfair competition be eventually successful, the respondent (infringer) would be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.

This procedure usually takes five to 10 months, although it can be longer if the binding order or decision of the Russian Federal Anti-monopoly Service/its territorial division is appealed in court.

Cease-and-desist letters

Sending a cease-and-desist or demand letter has become a pre-requisite to a court action in certain instances. In particular, a trademark owner will not be able to claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.

The infringer has 30 days to respond to the cease-and-desist letter. The infringer’s failure to respond or refusal to comply with the terms of the letter provides the trademark owner with a legal standing to sue and claim monetary relief in court. 

Sending a demand letter to the alleged infringer claiming a voluntary cessation of trademark infringement may be the easiest and the most effective out-of-court enforcement option in many situations. 

Who can file a trademark infringement action?

Generally, the valid registrant (ie, trademark owner), its registered assignee or registered exclusive licensee is entitled to file trademark infringement actions, provided that their rights and legitimate interests are affected by the unlawful/unauthorised trademark use. Non-exclusive licensees, distributors or other authorised trademark users do not have the same privilege.

What is the statute of limitations for filing infringement actions?

The general statutory period of limitations for filing a trademark infringement action is three years from the date when the claimant became or should have become aware of the infringement. The same period applies to the procedure for the execution of the effective court decision concerning the trademark infringement matter.

What is the usual timeframe for infringement actions?

Please see the section on actions above.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Preliminary and permanent injunctive reliefs are generally available and may be granted in trademark infringement disputes.

Preliminary injunctive relief will be awarded where the claimant can demonstrate that failure to stop the infringement will lead to substantial damages and/or make any subsequent court order unenforceable. 

In a trademark infringement matter involving unauthorised domain name registration and use, a special pre-trial procedure exists for obtaining temporary restraining order through a domain registrar. This pre-trial security measure is aimed at ‘locking’ the conflicting domain name; the pre-trial measure is  valid for 14 days to enable trademark owner to file complaint with the competent court, provided that the mark owner gives a warranty for indemnification in the complaint.

Permanent injunctive relief will be granted where a claimant can prove the trademark infringement. A plaintiff must typically provide evidence of the following four elements:

  • the defendant used the mark without authorisation of the trademark owner;
  • the mark used by the defendant is identical or confusingly similar to the owner’s mark;
  • the disputed mark is used in connection with goods or services similar to those for which the owner’s mark is registered; and
  • this creates a likelihood of confusion.

Where the plaintiff fails to prove one of these elements, the court will not make a finding of trademark infringement and, accordingly, will not grant the injunctive relief.

Evidence that may be submitted to prove trademark infringement include:

  • bills of ladings, contracts and other sale and purchase confirmation documents;
  • samples of counterfeit or grey market goods;
  • expert opinions and public survey results;
  • private detective reports and notary public protocols; and
  • audio and video records.

Evidence needs to meet the requirements of relevance and be admitted for consideration.

Essentially, when claiming trademark infringement, the plaintiff must act in good faith. Abuse of rights shall lead to the dismissal of the case.

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In addition to preliminary and permanent injunctive reliefs, the owners of the infringed mark can claim the following monetary relief:

  • damages, including actual damages or lost profits; or
  • a fixed amount ranging between RUB10, 000 and RUB5 million;
  • double the price of the counterfeit goods; or
  • double the cost of the trademark licence.

The trademark owner can also seek and obtain:

  • the removal of the trademarks from documents, advertisements and signboards;
  • the seizure and destruction of the counterfeit goods; and
  • the publication of the court order.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Russian customs authorities are required to suspend the release of products discovered in the course of customs operations that they suspect infringe trademark rights registered in the Russian Customs IP Register. 

Where products are suspended, the customs authorities must immediately give notice of the interception to the trademark owner by sending the latter an official notice of suspension along with a presentation of the facts and pictures of the seized products. Upon receipt of the said notice, the trademark owner may inspect the products and decide whether to initiate (in case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the statutory period. 

The statutory period is 10 working days, which may be extended by another 10 working days if the mark owner files a motivated request reasoned by a corresponding enforcement action. Within this period (ie, 20 working days), the trademark owner may also request samples of the products seized.

In case of trademark infringement, the mark owner can enforce its rights by applying for various enforcement actions. In practice, administrative proceedings will be the most efficient enforcement option against the importation of counterfeits, while civil proceedings will be the only viable enforcement measure against parallel imports.

What defences are available to infringers?

An alleged infringer may use the following material defences:

  • the mark used is not protected with regard to the goods at issue;
  • the sign at issue was not used in a trademark sense;
  • there is no similarity and likelihood of confusion between the conflicting marks;
  • there is no similarity between the conflicting goods and the goods as to which the respective mark is registered;
  • the defendant has a licence and/or the consent of the owner to use the mark;
  • the plaintiff has no priority right over the conflicting designation (eg, domain name);
  • the plaintiff’s trademark rights are exhausted; or
  • the plaintiff is abusing its rights.

In addition, the defendant can raise the following procedural defences:

  • the period of limitation applies;
  • the plaintiff chose the incorrect jurisdiction or forum; or
  • the plaintiff filed a lawsuit against the wrong defendant.

Further, the defendant can initiate an invalidation action against the disputed trademark. An invalidation action is considered by the Chamber of Patent Disputes of the RUPTO and such action will not stay the infringement proceedings. In other words, the trademark infringement action and the invalidation action will be independent from each other. Otherwise, the defendant can commence an unfair competition action based on unfair acquisition and use of the disputed trademark. Last but not least, the defendant can file an action for trademark non-use with the Russian IP Court.

What is the appeal procedure for infringement decisions?

The appeal venues described below are generally available in trademark infringement matters:

  • appellate courts review existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
  • the Russian IP Court, acting as the first cassation appeal court, hears cases on the existing case records, but does not re-evaluate the evidence or facts;
  • the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
  • the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
  • the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Moscow City Court) review the existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
  • the presidium of the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Presidium of the Moscow City Court), acting as the first cassation appeal court, hear cases on the existing case records and do not re-evaluate the evidence/facts;

Assignment and licensing

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

A trademark can be assigned in whole or in part, with or without goodwill, and with certain jurisdictional restrictions (for international trademark registrations). Trademark applications can also be assigned during the examination process.

Trademark assignments are deemed to be entire transfers or sales of the exclusive (trademark) rights. Therefore, trademark assignment agreements cannot contain any restrictions or limitations on further trademark exploitation.

An assignment in relation to trademarks may not be possible where:

  • the assignor wants to retain other confusingly similar trademark registrations, designs and/or company names; or
  • the assignor wants to keep in its name the trademark registration in connection with certain goods or services similar to the assigned ones.

There may be other grounds for misrepresentation or risks of confusion in the context of trademark assignments.

An assignment of trademark rights must be made in writing and signed by both parties. The notarisation and legalisation of the deed of assignment or trademark assignment agreement is not required. However, it is mandatory to register the assignment of a trademark, whether it is registered nationally or internationally.

Failure to register the trademark assignment will result in the assignment being invalid against third parties.

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademarks can be licensed in whole or in part (under certain circumstances), with or without goodwill, and with jurisdictional restrictions (for international trademark registrations). Pending marks or trademark applications cannot be licensed.

Licensing of trademarks can be done on a sole, exclusive or non-exclusive basis. Trademark licences must also provide a term (the default term is five years) and specify the territory (the default territory is the whole of Russia) covered by the licence.

Trademarks can be licensed either in connection with all goods or services covered by the relevant trademark registrations, or in connection with specific goods or services covered by the trademark registrations. Goods and services that are not indicated in the trademark registrations may not be licensed.

A licence agreement must be made in writing and signed by both parties. The notarisation and legalisation of the licence agreement is not required. However, it is mandatory to register the licence of a trademark, whether it is registered nationally or internationally.

Failure to register a trademark licence will result in the licence being invalid against third parties

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The main provisions that must be included in a trademark licence are the following:

  • details of the parties (ie, company names and addresses of licensor and licensee, as well as their authorised officers/signees);
  • subject matter of the licence (ie, the trademark registration number);
  • details of the licensed goods or services subject to the licensed trademark registration (goods and services must match those indicated in trademark registration or certificate);
  • type of licence (ie, whether it is sole, exclusive or non-exclusive);
  • licensable rights (ie, the specifically permitted use of the licensed trademark);
  • compensation clause, (this is especially applicable to a licence arrangement between business entities or companies);
  • licensed territory (the default territory is the whole of Russia);
  • licensed term (the default term is five years);
  • sub-licence clause (ie, whether sub-licensing is permitted automatically or whether it is subject to the consent of the licensor); and
  • ‘termination for convenience’ clause (ie, whether the licensor and licensee have the right to unilaterally terminate the licence).

Other provisions may be added depending on the contract structure and the parties’ negotiations.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Security interests over trademarks are usually taken in the form of a pledge or a fixed charge. Trademark security interests are currently the most common pledges or charges in Russia (out of other IP subject matters).

A security agreement must be in writing and signed by both parties. The notarisation and legalisation of the security agreement is not required. However, to be able to enforce the contacted security interest, the trademark pledge or charge over trademark, whether protected under a national or international registration, must be registered.

Failure to register the trademark security interest will result in the security interest being invalid against third parties.

In practice, judicial and non-judicial foreclosures are used to enforce trademark security interests.

Related rights

Related ip rights.

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, trademarks can be protected under other IP rights, including by virtue of:

  • copyright law (eg, logos);
  • industrial design patent law (eg, three-dimensional marks); and
  • unfair competition law (eg, trade dresses).

The existence of one form of IP protection does not exclude the other and, therefore, dual or even triple legal protection is possible.

Online issues

Trademarks online and domain names.

What regime governs the protection of trademarks online and domain names?

Trademark rights are afforded protection online as well. Therefore, any unauthorised use of a trademark in a domain name or on a website constitutes trademark infringement.

Alternative dispute resolution (ADR) systems, such as the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension System (URS), do not apply to infringement matters involving ‘.ru’ domain names. Thus, domain name cancellations or transfers are usually achieved based on trademark infringement litigation initiated in local courts.

When the competent court makes a trademark infringement finding, the involved domain registrar has to cancel the disputed domain name registration; the trademark owner has priority (‘preemptive right’) to register the domain name in its own name within the statutory period.

Even though the UDRP does not apply to ‘.ru’ domain name disputes, the Russian courts support the international principle of ‘unfair competition repression’ and apply the UDRP’s three-prong test through the implementation of Article 10 bis of the Paris Convention for the Protection of Industrial Property. In other words, a trademark owner must prove the following elements in court:

  • the domain name is identical or confusingly similar to a trademark in which the plaintiff has rights;
  • the defendant has no rights or legitimate interests in respect of the domain name; and
  • the defendant’s domain name has been registered and is being used in bad faith.

It will typically take three to five months to obtain a first-instance court decision in a trademark infringement case involving an unauthorised domain name registration and use.

Law stated date

Correct as of November 23 2017.

IAM Patent 1000

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FAQs - Recording Trademark Assignments in Turkey

Is there any requirement for disclosing or declaring a consideration in assignment agreements.

No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording an assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there are more than one trademark owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights.

In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the trademark registry.

Is the recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry

Is the original of Assignment Agreement required?

Not actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

Is it possible to record Assignment Agreement comprising multiple trademark cases by one request for assignment at TURKPATENT ?

Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office.

Is Power of Attorney required for recording an assignment in the trademark registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.

Are official fees payable in order to record a Trademark Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one trademark within Assignment, official fees should be paid for each case separately.

Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish trademark application or registration numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.

Can a pending trademark application be assigned?

Yes, a pending trademark application can be assigned; there is no requirement for grant or registration of application for assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of trademark should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, i.e. Courts, chambers of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.

If a trademark registration or trademark application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a trademark.

If a trademark or trademark application pledged, is it still possible to assign the rights thereon?

Pledge is not an obstacle to assign the rights of a trademark.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

Can a registered or applied-for trademark be assigned partially?

Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.

In the case of a partial assignment, is there any specific requirement for Assignment Agreement?

Yes, it is obligatory to indicate class numbers and goods and services subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.

In the case of a partial assignment, how does TURKPATENT handle recordal of the assigned part of trademark registration or application?

TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.

In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?

No, it is not obligatory to assign same or confusingly similar goods and services.

If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?

Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol if they are not filed by means of International Bureau of WIPO .

Do you have further questions about assignments for trademarks in Turkey? Please contact us . We will answer your questions as soon as possible.
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Columbia University in the City of New York

Miriam and ira d. wallach art gallery.

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Moscow: City, Spectacle, Capital of Photography

April 30–june 21, 2003.

Moscow: City, Spectacle, Capital of Photography , an exhibition of 20th-century photographs of Moscow, opens at Columbia University's Miriam and Ira D. Wallach Art Gallery on Wednesday, April 30, 2003 and remains on display through Saturday, June 21, 2003.

Moscow has been a powerful magnet for many Russian photographers of the 20th century. Moscow: City, Spectacle, Capital of Photography presents the work of 31 photographers, whose images have defined the visual experience of Moscow from the 1920s to the present. Diverse in form and strategy, the 90 photographs chosen for the exhibition trace the history of Russian documentary photography and offer insight into individual practices. From Aleksandr Rodchenko's constructivist visions and Evgenii Khaldei's humanist landscapes to Igor Moukhin's scenes of urban spectacle and alienation in the works of Russia's key 20th-century photographers, Moscow ventures beyond the expected image as a site of famous landmarks, architectural treasures and dramatic lifestyles.

Early 20th-century photographers Boris Ignatovich and Arkadii Shaikhet saw themselves in the vanguard of an emerging mass-media culture, defining with their cameras the visual experience of Soviet modernity. For nearly 70 years, Soviet photography was assigned the duty of maintaining the ideological rigidity of the Soviet State. Yet, as examples of the work of Iakov Khalip, Anatolii Egorov, Mikhail Savin, and Mark Markov-Grinberg show, Soviet photographic practices were much more complex than has been previously acknowledged. The works of these photographers remain intensely compelling to a modernist eye.

Contemporary Russian photographers, such as Lev Melikhov, Valerii Stigneev and Sergei Leontiev, engage with the legacy of the Soviet documentary photography. But for them the documentary is a complex and multivalent genre, which incorporates subjectivity, ambiguity and reflexivity and comments on social and cultural issues without losing sight of the position from which that commentary is made. In the recent photographs by Vladimir Kupriyanov, Igor Moukhin, Anna Gorunova and Pakito Infante, the "real" space of Moscow is replaced by an imaginary and optical spaces of virtuality.

The works in the exhibition are on loan from Moscow's Cultural Center Dom, and many are being shown outside Russia for the first time. In conjunction with the exhibition, the Wallach Art Gallery is publishing an illustrated catalogue with a scholarly essay by the exhibition curator, Nadia Michoustina, a Ph.D. candidate in Columbia University's Department of Slavic Languages. The essay presents a nuanced history of Russian photography of the 20th century, and contributes to an interpretation of extraordinary images.

ASUI sponsors three candidates for the upcoming city council election

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confirmatory deed of assignment trademark

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confirmatory deed of assignment trademark

How to update ownership information Submit a request to transfer ownership or change the name Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid. What to include in a deed of assignment

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights.

Confirmatory Assignment definition Definition: Confirmatory Assignment Open Split View Cite Confirmatory Assignment means a short form assignment in the agreed terms relating to the Intellectual Property Rights transferred to the Company pursuant to the Philipp IP Transfer Agreement. Sample 1 Based on 1 documents

1. Depending upon the applicable IP rights and related law of contract of the jurisdiction, to what extent can an unwritten agreement validly assign IP rights? 2. Assuming that an unwritten assigment is valid, what is the evidentiary showing that is required? 3.

confirmatory assignment documents remain true for the recordal of a merger and/or change of name, such as the assessment of government fees on a per trademark basis, as a general rule, fewer documents need to be prepared and executed by the parties for recordal purposes.

Chapter 0300. Section 302. (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in ...

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement.

A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant's business, or ...

The UK patent and registered trade mark regimes provide that, unless assignments, mortgages and charges of such rights are registered at the UK Intellectual Property Office (IPO), they do not bind those who subsequently acquire, in good faith, a conflicting interest in them, at a time when they did not know of the earlier unregistered transaction (section 33(1), 1977 Act and section 25(3), TMA).

Assignor agrees to execute a confirmatory assignment of the Patent Rights substantially in the form attached as Appendix B hereto for recordation with the United States Patent and Trademark Office and, as required, in foreign patent offices.

In these cases, a separate trademark assignment (or other IP assignment) document should be drafted for execution by the parties. In the UK, there are two types of document that enable the transfer of ownership of property - a deed of assignment and an assignment agreement, the latter also being known as a contract.

A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment.

Assignment of Intellectual Property Rights (a) Executive hereby assigns to Nucor Corporation Executive's entire right, title and interest, including copyrights and patents, in any idea, invention, design of a useful article (whether the design is ornamental or otherwise), work product and any other work of authorship (collectively the "Developme...

Assignment or transmission of a trade mark is the process by which ownership of a registered trade mark or a trade mark application may be passed from one party to another. Sections 81 and 82 of the Trade Marks Act 2002 ("the Act") allow for the assignment or transmission of a trade mark application or registration.

The assignor confirms that no dispute in respect of the trademark/s is pending in any court of law. The assignor and assignee confirm that there is remittance of funds outside India in connection with this assignment.

However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights. In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights.

Property Search by Address Lookup. Find Moscow residential property records including ownership, mortgage & deed records, land, parcel, zoning, & structural details, sales history, valuations, property tax assessments & more.

Moscow: City, Spectacle, Capital of Photography, an exhibition of 20th-century photographs of Moscow, opens at Columbia University's Miriam and Ira D. Wallach Art Gallery on Wednesday, April 30, 2003 and remains on display through Saturday, June 21, 2003.. Moscow has been a powerful magnet for many Russian photographers of the 20th century. Moscow: City, Spectacle, Capital of Photography ...

The first bill, F23-R04 is ASUI's endorsement for three candidates running for the Moscow City Council. Bryce Blankenship, Drew Davis, and Sandra Kelly were the candidates ASUI members chose after conducting a forum with all the potential members. Three seats are open for the Moscow City Council and voting is on November 7.

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IMAGES

  1. Nunc Pro Tunc

    nunc pro tunc trademark assignment template

  2. Trademark Assignment Agreement Template

    nunc pro tunc trademark assignment template

  3. Free Trademark Assignment Agreement Template

    nunc pro tunc trademark assignment template

  4. Nunc Pro Tunc Form

    nunc pro tunc trademark assignment template

  5. Nunc Pro Tunc Form

    nunc pro tunc trademark assignment template

  6. ORDER GRANTING MOTION TO CORRECT PROPERTY ADDRESS NUNC PRO TUNC IN

    nunc pro tunc trademark assignment template

VIDEO

  1. How to Find the Speaker List and Assignment Template 1.03

  2. Nunc Pro Tunc (Now For Then): GS Taj Tarik Bey

  3. Foreign Trademark Registration in Nepal Kraya And Partners

  4. Trademark Assignment Agreement Template

  5. Process of Trademark ™️ Transfer| Trademark Assignment |Trademark Transmission| 8076906274 Law Firm

  6. ENTENDENDO MELHOR O NUNC PRO TUNC NOS EUA!

COMMENTS

  1. Trademark Assignment (Nunc Pro Tunc)

    This template is a nunc pro tunc trademark assignment between an assignor and assignee. It may be used to memorialize in writing a prior oral agreement to assign a trademark. This template includes practical guidance, drafting notes, and alternate clauses. The term "nunc pro tunc" is a Latin expression that means "now for then." A nunc pro tunc assignment is thus essentially a retroactive ...

  2. IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and

    In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning "now for then."A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date. For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc ...

  3. Trademark Assignment

    Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.

  4. PDF Using Assignment Center for Trademarks

    Corrective Assignment. Previous reel number, previous frame number, and. identify conveyance text of the original assignment. Other. Brief description of the nature of conveyance transaction. Do not select "Other" if the nature of conveyance is. Assignment • Merger • Change of name • Nunc Pro Tunc • Assignment of the entire interest ...

  5. Trademark assignments: Transferring ownership or changing your name

    Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.

  6. Trademark Assignment

    I'm experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059, via email at morris ...

  7. What is a Nunc Pro Tunc Trademark Assignment?

    A nunc pro tunc trademark assignment is a legal document that retroactively assigns ownership of a trademark from one party to another. The term "nunc pro tunc" is a Latin phrase that means "now for then," and it indicates that the assignment is being made retroactive to a date in the past. Nunc pro tunc assignments are typically used ...

  8. A Dive into 'Nunc Pro Tunc'

    The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws. Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title.

  9. Intellectual Property: Assignments and Transfers

    A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...

  10. Patent and Trademark assignments

    Retroactive assignments: You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these "Nunc Pro Tunc Assignments" (Latin for "now for then"). However, the drawback of such late assignments is that the "automatic" anti-fraud legal protection no longer operates.

  11. PDF Assignment Center Training Guide Patents

    Steps; Account Creation. Center landing page (public facing). On top of page far right, click the link, 'Create an account'. page. Please provide information for all required input boxes, as indicated with an "*"; 4. Once all input boxes are populated, the "Next" button will become "active". 5.

  12. Nunc Pro Tunc Assignment to Bridge Priority

    A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for "now for then," a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such as to bridge a ...

  13. More on What Nunc Pro Tunc Means

    In the IP field we typically use "nunc pro tunc" in the context of an assignment of a patent, trademark or copyright. The nunc pro tunc assignment becomes the subject matter for a blog post when someone back-dates an assignment to try to cure a standing defect. That is, Plaintiff P sues for infringement of a patent it thought it owned.

  14. Trademark Assignment

    TRADEMARK ASSIGNMENT. (NUNC PRO TUNC) Whereas, TEAMM Pharmaceuticals, Inc., a Florida Corporation having a place of business at 2502 Aerial Center Parkway, Morrisville, NC 27560, ( ASSIGNOR ) has adopted, owned and used the trademark XODOL, registered in the U.S. Patent and Trademark Office, Registration Number 2943009 on April 19, 2005; and.

  15. Trademark Assignment

    For "Nunc Pro Tunc" conveyances please provide the date of the conveyance in mm/dd/yyyy format in the following Nunc Pro Tunc date section. For corrective assignments please provide reel/frame of original original recordal in the Additional Information section below and/or attach a copy of the original coversheet for a corrective assignment.

  16. Ownership Transfer of Intellectual Property Rights in General

    An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the "assignment". The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis ...

  17. Federal Circuit law governs patent assignment interpretation and nunc

    Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the ...

  18. Patent Assignment (Nunc Pro Tunc)

    This precedent is a basic patent assignment by which the assignor assigns and/or confirms the assignment of a Canadian patent application, which assignment is to take nunc pro tunc effect (i.e., retroactive legal effect). This precedent includes practical guidance and drafting notes. Nunc pro tunc is a Latin expression meaning "now for then".

  19. USPTO TSDR Assignments Case Viewer

    USPTO TSDR Assignments Case Viewer Case Id. Document Description

  20. PowerPoint City Map Moscow (Russia)

    Moscow - City Map PowerPoint Template. (M4010) City map of Moscow with administrative districts and numerous design examples. Add to cart. $19.00*. Add to wish list. Quantity of slides. : 20.

  21. FEIG ELECTRONIC: Moscow-City Skyscrapers Streamline Parking Access and

    "Underscoring NXP's innovation and leadership in developing advanced RAIN RFID technologies, our UCODE DNA was chosen to be incorporated with the FEIG and ISBC implementation of the contactless identification system in the prestigious Moscow-City," said Mahdi Mekic, marketing director for RAIN RFID with NXP Semiconductors.

  22. confirmatory deed of assignment trademark

    A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark. A trademark is a valuable asset representing a business's goodwill and reputation.

  23. 21 Things to Know Before You Go to Moscow

    1: Off-kilter genius at Delicatessen: Brain pâté with kefir butter and young radishes served mezze-style, and the caviar and tartare pizza. Head for Food City. You might think that calling Food City (Фуд Сити), an agriculture depot on the outskirts of Moscow, a "city" would be some kind of hyperbole. It is not.