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[lawtieda]

I work for a small tech company that just underwent a merger. As part of the merger, the corporation I work for was reorganized into an LLC. Some of our trademarks have issued and others are still in prosecution. Is assignment in this case as easy as going to the USPTO and filling out a change of name form, or does the fact that some of the applications are on an ITU track complicate matters?

Thanks

[Zonath]

I assume you have seen the following:  http://www.uspto.gov/trademarks/process/assign.jsp


I do not believe any of the trademarks involving intent to use complicates the matter further, since the new business is a successor in interest of the old.

[JSonnabend]

Prepare a single assignment for all the registrations/applications, execute it and record it.  Then file a change of owner's address in the pending applications.

- Jeff

[lawtieda]

That is what I thought. We received a letter from a trademark firm stating that things would be a lot more complicated, but this was my understanding as well. Thanks a lot.

[Zonath]

Yeah.  Normally, you can't assign an Intent to Use application, but since your new business is a successor in interest, it shouldn't be a problem.  See 15 USC § 1060:

(1) 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. Notwithstanding the preceding sentence, no application to register a mark under section 1051 (b) (involving intent to use) of this title shall be assignable prior to the filing of an amendment under section 1051 (c) of this title to bring the application into conformity with section 1051 (a) of this title or the filing of the verified statement of use under section 1051 (d) of this title, 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.

(Section in bold added by me)