Q: Sold our business. In the agreement we also sold the trademark. What does the new owner need to do to change ownership?
A: You'll need to execute a Trademark Assignment Agreement which effectively assigns the trademark and any goodwill associated with the mark to the new owner. Then that Owner can file an amendment with the USPTO. If you need assistance with any of this feel free to email me at jason@altviewlawgroup.com to discuss.
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A:
Mr. Brooks is correct. One thing to note is that transfers of trademarks without also transferring the goodwill are invalid as "assignments in gross." You cannot simply say that you have transferred the goodwill, but must actually do so, by transferring the related underlying assets, so as to ensure that the standards of quality remain the same. Failure to do that actually invalidates the trademark.
As you indicate that you have sold the entire business, you have probably accomplished this requirement. However, you need to make sure that the written agreement assigning the trademark makes this clear so as to avoid any future challenges that you performed an assignment in gross.
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