Understanding the Lawfulness of Electronic Signatures for Trademark Assignment Agreements

How to eSign a document: electronic signature lawfulness for Trademark Assignment Agreement

hey this is attorney eels with potts weinstein and today we're going to talk about how to do the formal transfer of ownership of a trademark if you want a trademark and you need to have some one else or some other business own the trademark or some other legal entity owning the trademark you actually have to file something through the patent and trademark office this commonly happens for my clients either because they're selling their business altogether or because when they started they were just a sole proprietorship or general partnership and now they have an llc or corporation in that case you actually have to formally transfer the ownership of the trademark as an assignment so how do you do that go to the website of the united states patent and trademark office and then under trademarks you can if you go to the apply online section i know you're not applying for a trademark it will have all the different forms that you need and as the time that i'm recording this video number nine is the assignment forms this actually opens up an entirely different website called the e-t-a-s the electronic trademark assignment system this is where you're going to file your assignment forms click on that and you get to this page that has incredibly tiny text okay um that has the information about how this works so let's go ahead and start this there are a number of types of conveyances conveyance is just the fancy lawyer word for transferring ownership for selling something from one party another and by the way you'd have to be selling it for money can be just you transferring it from your sole proprietorship to the llc there's no money involved which is the transfer of the asset in exchange for membership shares of the llc so most of the time you're going to be doing this first one which is just assignment of the entire interest and goodwill involved with the trademark occasionally you're going to be doing something else so let's say you actually converted your sole proprietorship to an llc three years ago and you didn't do this okay but really it transferred back then so you want to backdate it how you backdate it is this the this assignment is now for then now for then which is you're doing the assignment paperwork now but actually the transfer occurred in the past so that's what you would click if you are trying to fix something that happened a while ago all this merger and conversion stuff is if you have changed from an llc in one state to analysis in another state or if you have converted from llc corporation that kind of thing court orders obviously if there's a court order corrective assignment is if you messed it up the first time and you have to fix it a lot of this other stuff is if the trademark is part of an estate of someone who's passed away or if you're using it as an asset as a security interest against a loan most of the time you're not going to be doing that kind of stuff so let's just say we're doing the first one the generic assignment of the entire interest in goodwill you can do by the way a bunch of trademarks at once it's much more efficient so if you have two three four five trademarks you can assign them all at the same time but here we're assuming you just have one so now we go to the next screen by the way as of the time of this recording these little buttons are not an intuitive place cancel is on the right next screen is on the most left that makes no sense to me why they designed it that way but i'm just warning you so next screen now we're putting in the correspondence information correspondence is just who do they contact it doesn't mean that you own it or that you're selling it or anything like that it's just who is the person the trademark office is going to contact if you screwed something up they need to ask somebody about it so here i'm going to put myself whoops you want to put in your email address so that way because you're going to get the information back um they really are in the united states government is really into fax numbers they're really into faxing things uh many of you i don't have a fax i actually do have an efax account so you can put in a fax number here you don't actually have to but the idea is if the email bounces it's a way for them to contact you and they're apparently going to do it by fax let's go to next screen conveying party this is the person who currently owns the trademark and is going to transfer it to somebody else to give it as a gift to sell it whatever so if you're a sole proprietor this is you as an individual if you have an llc and the llc is is um being converted into something else then it would be selling the business somebody else would be that so let's just say an individual let's say it's me elizabeth potts weinstein i don't put company necessarily because i'm doing the individual my citizenship i have to say where i'm at so i'm in california but if you're in a country that's outside the united states you put their country the date of execution i'm just going to put today's date and then you can add you can have more than one conveying part party let's say the trademark is currently owned by two people who created the business together and now they formed an llc so it'd be the two individuals who are transferring into the llc so add and go to the next screen a mistake that you can easily make is that the citizenship of an individual must be of the country type and the citizenship of a company is at the state time so i messed that up receiving party this is the person or business who is receiving the trademark so they're going to be the new trademark owner so let's say i'm transferring it to the to my corporation you see which is a corporation and it is a citizen of california if you have a dba or something you would enter that here i don't have a dba okay that's who's receiving is my corporation all right now you have to put the serial number of the trademark so this is a trademark i actually trademark application that i filed personally a long time ago and it actually didn't go through but it's one of mine now you have to attach the required legal document so when you do a transfer of a trademark when you sell or just transfer or gift a trademark it has to be done in writing it can't be done just by people talking so you have to create a document that does this assignment it might be part of some other document or it might be free standing it's pretty easy to do it freestanding since you're going to be filing it here and it's going to be a part of the public record so typically it's just a could be just one or two pages you may want to have it notarized you don't have to legally have it notarized for the trademark office but that can be helpful with other countries is the short version of that so you may want to go ahead and get notarized you can get things notarized for just like 10 or something like that at a ups store or somewhere in your neighborhood so let's say we're going to go ahead and attach a file here okay i just i just attached a blank piece of paper but you would want one that actually has something on it so now you are all now you are at the trademark assignment cover sheet and this is where you're going to check and make sure all the information is correct that you have the submission type the nature of it which kind category you're in who is coming from who is getting it which property we're going to be assigning and then the document that you attached here you type in your signature and your name i'm obviously not going to be doing that because this isn't a real assignment once you do that and you pay the fee to assign it then you have to wait for them to process that paperwork they're going to look and make sure that you filled everything out correctly and if you did they're going to put the assignment in the file for your trademark or trademark application right now it says that the trademark office at right now at the trademark office says that it is taking just a couple days to have assignments go through if they're done through the system if it takes a lot longer if you do it by fax or by paperwork because the human beings have to type things into the forms for you so if it's possible for you to do it using the online system i highly recommend doing that it'll go through faster and more it's much more likely that it'll be correct again this is attorney elizabeth weinstein if you have any questions about doing the assignment for your trademark application or your trademark feel free to go ahead and post them in the comments below and i'll try to point you in the right direction thumbs up if you found this helpful and subscribe if you like any more videos about trademarks about llc's corporations any of the stuff that small business owners and entrepreneurs need to handle when starting a business talk to you next time bye