1. Trademark Assignment

Principle of unanimous agreement:The transfer of trademark rights requires the consent of all co owners and the signing of a transfer document (USPTO Form PTO-1594).

Non transferable:It is not possible to transfer only one co owner's share (e.g. a trademark jointly owned by three people, one of whom cannot sell their 33% equity separately).

Filing requirements:The transfer agreement must be registered with the USPTO Electronic Assignment System, otherwise it is invalid for the new owner.

2. Trademark Licensing

① Restricted license:

No co owner shall independently authorize a third party to use the trademark.

The license agreement must be signed by all co owners, and the licensee's usage behavior must comply with the quality control standards of all co owners.

② Infringement risk: If one co owner grants unauthorized permission, other co owners may sue for the invalidity of the license and claim compensation.

3. Rights protection and dispute resolution

① Subject qualification for litigation:

Any co owner may sue the infringing party separately (without the need for unanimous consent), but the compensation shall belong to all co owners.

② Internal dispute risk: If there is a disagreement among co owners regarding the use of the trademark, it may lead to:

The trademark is revoked due to non use (such as partial co owners ceasing to use it);

Delay in renewal due to inability to reach consensus (renewal application must be submitted by all parties).

3、 How should shared trademarks be transferred and licensed?

Transfer refers to the permanent transfer of ownership of a trademark (such as sale to a third party). The transfer of a jointly owned trademark must be jointly acted upon by all co owners and cannot be divided or partially transferred.

1. Operation steps

Step 1: Reach a unanimous agreement among all parties

① All co owners must reach a written agreement on the transfer terms (such as transferee, price, conditions).

② Draft Assignment Agreement:

The content should include: transferor (all co owners), transferee, trademark registration number, and scope of transfer (must be the entire trademark rights, cannot be divided by share or region).

The protocol template can refer to USPTO Form PTO-1594 (Recording Form Cover Sheet), but the protocol itself is customized by a lawyer to ensure legality.

Step 2: Sign the document

① All co owners must sign the transfer agreement in person or electronically. Electronic signatures must comply with the ESIGN Act standards.

② If the co owners are unable to sign in person, a notarized Power of Attorney must be provided.

Step 3: Submit USPTO filing

Submit filing through USPTO's Electronic Assignment System (EAS) (website: https://etas.uspto.gov ）.

① Required documents:

Complete the PTO-1594 Cover Sheet.

② Copy of Transfer Agreement.

Trademark registration number or serial number (such as US registration number 1234567).

③ Processing time:

Usually 2-4 weeks, after successful filing, USPTO will update the TSDR (Trademark Status and Document Retrieval) record.

Step 4: Subsequent updates

After successful filing, the transferee becomes the new owner. All co owners need to change their information to the new owner in USPTO records (via TEAS' Change of Ownership form).

2. Key requirements and risks

① Principle of unanimous agreement:

If any co owner disagrees, the transfer is invalid. For example, if three people share a trademark and two agree to transfer it while one opposes, the transfer cannot proceed.

② Non transferable:

USPTO prohibits the transfer of "shares" (such as A transferring 50% of its equity), and trademark rights must be transferred as a whole. Violating this rule will result in the rejection of the filing.

③ Risk Warning:

Invalid without filing: Transfer without filing with USPTO is invalid for third parties (15 USC § 1060).

Dispute risk: Internal disagreements may trigger trademark revocation (such as Abandonment due to Non Use). Case: Two co owners of a startup company, one of whom transferred the trademark without authorization, and the other sued and the transfer was revoked, rendering the trademark invalid.

④ Alternative solution:

If co owners wish to 'exit', it is recommended to purchase the rights through an internal agreement rather than directly transferring the trademark rights.

License refers to authorizing a third party to use a trademark (such as brand cooperation) without transferring ownership. The license must ensure that all co owners control the quality of use, otherwise it may result in dilution or revocation of trademark rights.

1. Operation steps

Step 1: Draft a License Agreement

① The agreement must be jointly signed by all co owners and the licensee.

② Core terms:

Quality Control Clause: All co owners have the right to supervise the quality of the licensee's goods/services (such as product quality standards, marketing methods) and avoid trademark generic use.

Scope of License: Clearly define the usage region, product category (must be consistent with USPTO registration), duration, and royalty distribution.

Decision mechanism: agree on the voting rules among co owners (such as majority or unanimous agreement).

③ Protocol template: You can refer to the standard template of the International Trademark Association (INTA), but it needs to be reviewed by a lawyer.

Step 2: Signing and Execution

① All co owners sign the agreement (electronic signatures are acceptable).

② After the licensee starts using the trademark, all co owners must regularly inspect the usage (such as annual audits) to ensure compliance with quality control standards.

Step 3: USPTO filing (not mandatory but strongly recommended)

① License agreements do not require mandatory filing, but filing can protect rights and interests:

② Submit a copy of the agreement and PTO-1594 form for filing through the EAS system.

③ After filing, the licensing relationship can be traced in TSDR, which is beneficial for safeguarding rights.

2. Key requirements and risks

① Principle of overall control:

No co owner may grant individual permission. For example, if co owner A grants permission to a third party without B's consent, B may sue for the invalidity of the permission and claim compensation (Lanham Act § 32).

② Quality control obligations:

If all co owners fail to fulfill their supervisory responsibilities, USPTO may revoke the trademark on the grounds of "Naked Licensing" (Case: Dawn Donut Co. v. Hart’s Food Stores）。

③ Risk Warning:

Infringement risk: If the licensee uses improperly (such as selling inferior products), all co owners shall bear joint liability for infringement.

Internal conflict: Disputes over license revenue distribution may lead to termination of the agreement. Suggest pre agreeing on the allocation ratio in the shared agreement.

④ Exclusive license restrictions:

Shared trademarks typically avoid "exclusive licenses" as this may be considered a disguised transfer that requires unanimous consent from all co owners.

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