Arrange for legalization:
Hague Convention member countries (apostille via Secretary of State will suffice)
non-Hague Convention countries (legalization through consulate or embassy required)
US Legalization ; State of Delaware certification and cover memo
Need certified US applications or registrations?: USPTO - Online Shopping
Need certified CTM registrations? [example from OAMI-ONLINE - CTM-ONLINE - CTM004715397-FLICKR-certified.pdf ]
(but written request and fee payment now required: Inspection of File request)
Yes, a comma matters: http://assignments.uspto.gov/assignments/q?db=tm&sno=75049763 (Inasmuch as a second renewal was not filed by the late-filing deadline of 1/2/2018, this registration will be cancelled. The record nevertheless shows the importance of attention to format details, and in case the USPTO purges the assignment record, it is copied below in the file 75047949-comma-assignment.pdf.)
Succession issues: "Bunnies for sale" - "Rabbit & Co." - "Hare Inc."
Assignments:
assigns the entire interest and goodwill
consideration - "....for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged,..."
originals
notarization for signers - example of what to avoid...
cautions for ITU applications:
see Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc. (TTAB, Aug. 16, 2013) [http://ttabvue.uspto.gov/ttabvue/ttabvue-91188816-OPP-99.pdf]
Section 10(a)(1) of the Lanham Act is not new, and as this precedential decision reiterates, *must* be observed. Take care especially with intra-corporate assignments.
see Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, Appeal No. 2016-1703 (Fed. Cir. December 13, 2016); although not precedential, reiterates Lanham Act's Sec. 10 requirement that an ITU application cannot be assigned until a Statement of Use is filed, or goes to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing. A registration will be invalid which results from an agreement which is "...tantamount to an assignment." that does not observe these requirements.
Will any additional documents need to be signed to record the assignment?:
Israel: "...according to a[n] ... ITO requirement, in addition to the underlying assignment, either the assignee or the assignor has to sign an Affidavit confirming that, to the best of their knowledge and belief, the assignment of the trademarks is not likely to cause consumer confusion. Please note that this additional Affidavit, unlike the underlying assignment, needs to be notarized."
nunc pro tunc assignment example (and attached)
Due diligence:
research thoroughly: at least eleven (11) different factors to review *prior* to purchase, sale, or financing of trademark assets (Susan N. Weller, Esq./Mintz - April 9, 2020) ["TM Due Diligence...", below, and at link]
research thoroughly: will your client own the IP post-close? Does the Target actually own all the IP you want? Can and will the Target assign all the IP you want? See detailed background: "What a carve-up!"
"Realising that R-R Motors would be useless to them without the trademarks, VW agrees to purchase the factory and the Bentley brand for one billion marks."
and "Volkswagen buys carmaker Rolls-Royce, not name" [Associated Press 07/04/98 write-up, attached]
Abandonment of a mark:
Erich Specht, et al., v. Google, Inc., Case No. 11-3317 (7th Cir., Apr 4, 2014) (Rovner, J.): examples of what is and is not trademark use, causing loss of rights by abandonment
(opinion available via http://media.ca7.uscourts.gov/opinion.html, and posted below;
see summary by Jennifer M. Mikulina, Esq. (attached at link below)
Updated April 13, 2020