*The information below is not legal advice.
Great! You’re ready to begin trademarking your business name, but now you have to decide who exactly will own your trademark.
Well, the law recognizes that an individual, partnership, corporation, limited liability company, or other entity can be the owner of a trademark. The law also requires that the owner of the trademark be the one who controls the nature and quality of the goods and services used in connection with your brand. What does all this mean for you?
1. Individual Ownership
It means that you might consider putting yourself–an individual–as the owner. After all, you control the quality and nature of your business. This option can make sense if you just started your business, are a sole proprietor, or haven’t created a formal company structure.
Many entrepreneurs and small business owners will register the trademark personally and then transfer ownership to their company once it is fully formed. This ensures that the trademark is protected as early as possible without waiting for the business to be fully set up.
Look here to see How to Transfer Ownership from an Individual to a Business Entity.
2. Business Entity Ownership
In most cases, however, your business entity should be the trademark owner. This means the limited liability company (LLC), partnership, or corporation you created should own the trademark. An arrangement like this protects you and your business while creating an opportunity for growth down the line.
Business and Individual Protection
I’m sure you’ve heard it a million times, but one of the main advantages of having an entity is to protect you from any business liabilities. In simple terms, any debts, damages, and obligations that result from running your business will be your business’s responsibility and not your own personal responsibility. So, if your business owes another party any debts, the other party will not be able to claim any of your personal assets (like your car, savings, and home) to fulfill this debt.
Here’s the good news! These same advantages apply if your business owns your trademark! Any liabilities arising from the use of the trademark will be tied to business assets instead of your own personal assets. You can rest easier knowing there is a distinct wall between the trademark and your personal life.
Opportunities for Growth
By owning the trademark, your business can use it as an asset and increase the overall value of the company. In fact, trademarks can be sold, licensed, or even used as collateral for financing. You should consider whether opportunities for collaboration or franchising in the future would benefit your business. If you think it will, then having your business own the trademark is essential to making the licensing process a little easier. It will also make it easier to transfer ownership of your company in the future.
How to Register Your Business as the Owner in the Trademark Application
You can register your trademark through the online application process on the U.S. Patent and Trademark Office (USPTO) website (external link).
Under the section titled “Applicant Information,” enter the name of your business entity in the field for “Owner of Mark.” Then, select the description that matches the entity type of your business (i.e. limited liability company, corporation, partnership, etc.). Simple enough!
How to Transfer Ownership from an Individual to a Business Entity
If you filed a trademark application as an individual owner and now want to transfer ownership to your business entity, you can follow these steps.
First, access USPTO’s Assignment Center and log in with your USPTO account information (you will need to create an account if you do not have one already).
Once in the dashboard, click the icon for “Create New” and then “Start new trademark assignment.” You will need to fill out and add all of the conveyance information, trademark serial/registration numbers, and any applicable documents.
Before submitting this request, a specific application fee is required. At the time of this post, the application fee is $40, but check the current fee schedule for updates under Trademark Services Fee Code “8521.”
The USPTO also provides these resources to guide you through the assignment process:
Transferring Ownership/Assignment FAQ’s
https://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs
Powerpoint Presentation for Using the Assignment Center
https://www.uspto.gov/sites/default/files/documents/Using-Assignment-Center-Trademarks-training.pdf
If you have more questions about the trademark application process, transferring ownership, or need a business consultation, we highly recommend contacting a trademark attorney like Andrea Sager – andrea@andreasager.com.
*The information in this article is not legal advice*
