If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is last part in a three-part series about federal trademark registrations.
7. Treat Your Trademark Like a Business Asset. Your trademark is a business asset, which gives it qualities that are important to income, business valuation, and estate planning considerations.
- Personal Property. Trademarks are considered personal property, like cars or jewelry, and can be bought and sold like other personal property.
- Business Valuation. You may wish to list your trademark registration as a business asset on your balance sheet. Trademark registrations typically fall under the “goodwill” business asset, and federal registrations increase the value of goodwill substantially due to the strengthening of the brand associated with the trademark. Your trademark lawyer will be able to help if you need a formal appraisal of your trademark for business purposes.
- Income Generation. Some trademark owners choose to create intellectual property holding companies for trademarks and other intellectual property. These holding companies license intellectual property rights to others (which may or may not include companies with common ownership). Holding companies can be useful in generating a royalty stream associated with your intellectual property. You should consult with an accountant to determine if a holding company is an appropriate method for you to generate income that receives preferable tax treatment. Most trademark lawyers can help you set up holding companies and the associated license and transfer documents necessary to convey trademark registrations.
- Estate Planning. If you own your trademark rights individually, the trademark will be treated like any other divisible asset, such as a bank account. There are downsides to a lack of estate planning for individually-owned trademarks, including the fact that every heir could have the right to sell, license, or otherwise encumber the trademark to the detriment of all other devisees. For this reason, a solid plan needs to be in place for individually-owned trademarks.
8. Changes in Ownership or Address. If ownership of the trademark changes (either by sale or restructuring), the USPTO should be formally notified by recording the paperwork. Likewise, if your address changes, the USPTO needs to be updated so it will send any notices relating to the registration to the proper address.
9. Be Wary of Official-Looking Paperwork. Many unscrupulous companies send solicitations to trademark registrants on official-looking letterhead, or in official-looking emails, for worthless services. This is a large enough problem that the USPTO has a page dedicated to non-USPTO solicitations on its website at http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations (last visited March 1, 2015). You should not send money to anyone concerning your trademark without consulting a trademark lawyer first.
That concludes our three-part series on trademark registrations. Thanks for reading!