Making Trademark Assignment Agreement for Transfer

[Derrick12]

I have a bit of an odd situation. I am the owner of 2 single member LLC's. I want to transfer (Assign) a trademark from my ABC LLC to my DEF LLC (example). The USPTO requires a legal document to upload on the ETAS system as proof that the transfer of the trademark was agreed. I can make an Assignment Agreement, but I'm not sure how it will look when I sign my name at the bottom for both parties since I am the single owner and have no employees for both the LLC's - will the USPTO delay that transfer because it looks weird? Another option I was thinking is that I can draft a Authorization agreement and give a third party authority to sign on behalf of one of my LLCs so there are different names that are signing an agreement.

I want the transfer to be as easy as possible without any delays from the USPTO. What do you suggest? Thanks in advance for the help and advice.

 

[quincy]

I have a bit of an odd situation. I am the owner of 2 single member LLC's. I want to transfer (Assign) a trademark from my ABC LLC to my DEF LLC (example). The USPTO requires a legal document to upload on the ETAS system as proof that the transfer of the trademark was agreed. I can make an Assignment Agreement, but I'm not sure how it will look when I sign my name at the bottom for both parties since I am the single owner and have no employees for both the LLC's - will the USPTO delay that transfer because it looks weird? Another option I was thinking is that I can draft a Authorization agreement and give a third party authority to sign on behalf of one of my LLCs so there are different names that are signing an agreement.

I want the transfer to be as easy as possible without any delays from the USPTO. What do you suggest? Thanks in advance for the help and advice.

Am I understanding you correctly? You will not be transferring ownership in the mark because you still will be the owner of the mark, right? You just want your DEF LLC to have trademark rights in a name currently registered with the USPTO to ABC LLC?

 

[zddoodah]

will the USPTO delay that transfer because it looks weird?

I'm not sure what you think will "look[] weird," but nothing you posted suggests that the USPTO might delay anything. Also, the assignment is what effects the transfer, not anything that the USPTO does. You should also be aware that, since a trademark is an indicator of the source of goods and/or services, simply assigning a trademark does not necessary mean that the assignee will acquire any enforceable rights. Will DEF LLC now be producing or providing the goods or services that ABC LLC was previously providing under the mark?

I want the transfer to be as easy as possible without any delays from the USPTO. What do you suggest?

I suggest you retain the services of a trademark attorney.

 

[quincy]

Here is a link to the USPTO with information on trademark assignments:

https://www.uspto.gov/trademark/trademark-assignments-change-search-ownership

I agree that seeing a trademark professional in your area to go over the particulars would be smart.

 

[LdiJ]

You are definitely overthinking the part where you are concerned about you being the signer on both ends.

 

[quincy]

You are definitely overthinking the part where you are concerned about you being the signer on both ends.

The one thing Derrick mentioned that he shouldn’t do is confuse or disguise original ownership of a mark by introducing a third party.

 

[Derrick12]

Am I understanding you correctly? You will not be transferring ownership in the mark because you still will be the owner of the mark, right? You just want your DEF LLC to have trademark rights in a name currently registered with the USPTO to ABC LLC?

Thanks for your reply and help here. Well actually ownership will be transferred from one LLC to another LLC. But I will still remain owner of both LLCs.

 

[Derrick12]

I'm not sure what you think will "look[] weird," but nothing you posted suggests that the USPTO might delay anything. Also, the assignment is what effects the transfer, not anything that the USPTO does. You should also be aware that, since a trademark is an indicator of the source of goods and/or services, simply assigning a trademark does not necessary mean that the assignee will acquire any enforceable rights. Will DEF LLC now be producing or providing the goods or services that ABC LLC was previously providing under the mark?




I suggest you retain the services of a trademark attorney.

Yes DEF LLC will still be producing the same goods that were registered with the trademark with ABC LLC. My question was that I have to make an assignment agreement as proof that the transfer occurred from ABC LLC to DEF LLC, but at the bottom I have to sign my name for both parties since I am the owner of both LLCs. I just thought this might look confusing to the trademark office?

 

[Derrick12]

You are definitely overthinking the part where you are concerned about you being the signer on both ends.

Thanks for your help! I thought the same but I never really heard of an agreement where the signer of both companies on the agreement is the same person.

 

[quincy]

Thanks for your reply and help here. Well actually ownership will be transferred from one LLC to another LLC. But I will still remain owner of both LLCs.

There can be more to consider with a trademark transfer than the name alone.

Although your assignment of rights transfers any goodwill associated with the name, it does not transfer any of the assets from one company to another. This is separate and possibly equally important transfer of rights.

I recommend you sit down with a trademark attorney in your area to discuss your plans and the reasons for them. Your goal with the transfer should be to show a clear chain of ownership of the mark (and possibly any associated assets) from one LLC to the other.

Good luck.

 

[PayrollHRGuy]

Considering that both are single member LLCs and the situation as described by the OP, the only reason I can see to go through all of this is if he has plans to sell one of the LLCs or both to different people.

 

[quincy]

Considering that both are single member LLCs and the situation as described by the OP, the only reason I can see to go through all of this is if he has plans to sell one of the LLCs or both to different people.

There can be other reasons. One LLC might be set up for, say, real estate services and the other LLC set up for the marketing of goods unrelated to real estate.

Another option would have been to have one corporation under the name ABC and have several other LLCs operating as d/b/a’s under the ABC umbrella.

I won’t second guess Derrick’s choice of two LLCs. I will assume he had some sort of advice and direction at the start of building his businesses.

 

[zddoodah]

Yes DEF LLC will still be producing the same goods that were registered with the trademark with ABC LLC. My question was that I have to make an assignment agreement as proof that the transfer occurred from ABC LLC to DEF LLC, but at the bottom I have to sign my name for both parties since I am the owner of both LLCs. I just thought this might look confusing to the trademark office?

It won't.

 

[quincy]

It won't.

It shouldn’t, assuming all else is done properly.

 

[Derrick12]

There can be more to consider with a trademark transfer than the name alone.

Although your assignment of rights transfers any goodwill associated with the name, it does not transfer any of the assets from one company to another. This is separate and possibly equally important transfer of rights.

I recommend you sit down with a trademark attorney in your area to discuss your plans and the reasons for them. Your goal with the transfer should be to show a clear chain of ownership of the mark (and possibly any associated assets) from one LLC to the other.

Good luck.

This makes sense!!! Thank you for all your help and guidance with this!