Model State Trademark LawAssignments, Changes of Name, and Other Instruments

Section § 14220

Explanation

This section explains how trademarks and their registrations can be transferred (or 'assigned') when selling a business. The transfer must include the reputation associated with the trademark and be documented in writing. You can record this transfer with the secretary of state, but it needs to be done within three months, or another buyer could potentially claim the trademark. If there's a change in ownership due to a name change, this can also be officially updated and recorded. Other legal documents related to trademarks, like licenses, can also be recorded with the secretary. If you present a signed and acknowledged document, it's assumed to be valid, and you can use a photocopy for these records if it's confirmed as accurate. However, this law doesn't affect any other financial interests in the trademark, like security interests governed by another set of laws.

(a)CA Business & Professions Code § 14220(a) Any mark and its registration hereunder shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignment shall be by instrument in writing duly executed and may be recorded with the secretary upon the payment of the recording fee payable to the secretary as set forth in subdivision (b) of Section 12193 of the Government Code, who, upon recording of the assignment, shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof. An assignment of any registration under this chapter shall be void as against any subsequent purchaser for valuable consideration without notice, unless it is recorded with the secretary within three months after the date thereof or prior to the subsequent purchase.
(b)CA Business & Professions Code § 14220(b) Any registrant or applicant effecting a change of the name of the person to whom the mark was issued or for whom an application was filed may, on a form prescribed by the secretary, record a certificate of change of name of the registrant or applicant with the secretary upon the payment of the recording fee. The secretary may issue in the name of the assignee a certificate of registration of an assigned application or a new certificate or registration for the remainder of the term of the registration or last renewal thereof.
(c)CA Business & Professions Code § 14220(c) Other instruments that relate to a mark registered or application pending pursuant to this chapter, including, but not limited to, licenses, may be recorded at the discretion of the secretary, provided that the instrument is in writing and is duly executed.
(d)CA Business & Professions Code § 14220(d) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the secretary, the record shall be prima facie evidence of the execution of an assignment.
(e)CA Business & Professions Code § 14220(e) A photocopy of any instrument referred to in subdivision (a), (b), or (c) shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original.
(f)CA Business & Professions Code § 14220(f) Neither this chapter nor the recordal of any instrument received by the secretary pursuant to this chapter shall have any effect, including, but not limited to, any effect relating to attachment, perfection, priority, or enforcement, on any security interest governed by Division 9 (commencing with Section 9101) of the Uniform Commercial Code.
trademark assignment business goodwill assignment recording