Gaps in the chain of title
The USPTO's ownership records generally change only when someone records the documents. After mergers, name changes, and asset sales, registrations are often still listed under an old entity, and each missing link has to be filled with a document showing the transfer. A merger certificate, a name change, and an assignment are recorded as different kinds of documents, and the Office's assignment database shows what has been recorded so far. Errors on the record can delay renewals, complicate enforcement, or slow a sale of the business, so cleaning them up is usually easier before a deadline or transaction forces the issue.
Transfers the law restricts
A mark generally has to be assigned along with the goodwill of the business it represents, so a bare transfer of the name can be challenged. An application filed on an intent-to-use basis usually cannot be assigned before use has been shown, except to a successor to the relevant part of the business, and an assignment made in breach of that rule can put the application at risk. When a distributor or former partner registered the brand in its own name, an assignment back may be negotiated, but sometimes cancellation or another proceeding is the realistic route. A security interest given to a lender is a different document from an assignment and should be recorded as such.
Assignments outside the United States
Trademark rights are territorial, so each foreign registration needs its own transfer, often with local formalities such as notarization or legalization. Registrations obtained through the international registration system can have a change of ownership recorded centrally, but the new owner still has to qualify to hold those rights. Domain names and social media handles carrying the brand should move at the same time, since they are often held in individual employees' names. When we review a portfolio, we compare the record in each country against the corporate history, list the documents each gap needs, and set an order that puts upcoming renewals and transactions first.
