Legal Question in Business Law in California

It is fairly common for businesses to start out as sole proprietorships or small partnerships and then take on an LLC or corporate form once they get going. At that point the assets of the company, including trade and service marks are transferred from the individual owner(s) to the entity. Your best bet is to check with the PTO as to exactly how that is done, whether you change the registrant or just file some kind of notice of assignment.

Yes, you would assign the mark over the entity and then that gets recorded at the USPTO. In some cases, you may want to keep the mark under your own name, but this depends.

At this point in time, you would be wise to clear the mark before making any further investment. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process and a guide on how to choose a strong trademark:

http://www.lanternlegal.com/trademark_due_diligence.php

http://www.lanternlegal.com/test_trademark.php

It might be helpful to consult a business/IP lawyer now you can receive some proper guidance and understand exactly how best to move forward. If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.

Our firm is now referred by the American Bar Association (see under the New York section):

http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html

Kind regards,

Frank

www.LanternLegal.com

866-871-8655

[email protected]

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.