[E-trademarks] Proving that a corp. converted from an LLC owns trademarks registered by the LLC
Carole Barrett
carole at barrettiplaw.com
Wed Feb 19 22:14:26 UTC 2025
*Agreed. The “specialist” is incorrect. *
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Kevin Grierson via E-trademarks
*Sent:* Wednesday, February 19, 2025 5:07 PM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Kevin Grierson <kgrierson at cm.law>
*Subject:* Re: [E-trademarks] Proving that a corp. converted from an LLC
owns trademarks registered by the LLC
The assignment specialist is wrong. See TMEP 503.02. “The USPTO records
assignments of trademark applications and registrations, accompanied by
completed cover sheets. The USPTO also records documents that affect title
to a trademark application or registration, such as certificates issued by
appropriate authorities showing a change of name of a business or a merger
of businesses. Although a mere change of name does not constitute a change
of legal entity, it is a proper link in the chain of title. Documents of
merger are also proper links in the chain of title.”
*Kevin Grierson*********
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Partner
<https://www.cm.law/>
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757-726-7799
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kgrierson at cm.law
*Please note: Culhane Meadows is now CM Law
<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Jessica R. Friedman via E-trademarks
*Sent:* Wednesday, February 19, 2025 5:02 PM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Jessica R. Friedman <jrfriedman at litproplaw.com>
*Subject:* Re: [E-trademarks] Proving that a corp. converted from an LLC
owns trademarks registered by the LLC
EXTERNAL EMAIL
The Assignment specialist I spoke with today said that if the name has been
changed, then they won’t accept an assignment that is identified as an
entity conversion. But maybe I should just try it anyway. I can’t think of
anything else, since the LLC is defunct and there is no one who can sign a
document in its name.
Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com
URL: www.literarypropertylaw.com
[image: 1479430908386_PastedImage]
*From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of
Tim Ackermann via E-trademarks <e-trademarks at oppedahl-lists.com>
*Date: *Wednesday, February 19, 2025 at 4:45 PM
*To: *For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc: *Tim Ackermann <tim at ackermannlaw.com>
*Subject: *Re: [E-trademarks] Proving that a corp. converted from an LLC
owns trademarks registered by the LLC
This is the way. The conversion should be enough by itself.
Tim Ackermann
The Ackermann Law Firm
E: tim at ackermannlaw.com
P: 817.305.0690
F: 214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
Grapevine TX 76051
On Wed, Feb 19, 2025 at 3:32 PM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
Hi Jessica,
You can file entity conversion documents that don’t name trademarks,
listing the trademark properties the entity owns, then file the
assignment. I’ve done it several times.
kwg
*Kevin Grierson*********
|
Partner
<https://www.cm.law/>
[image: Mobile:]
757-726-7799
[image: Fax:]
866-521-5663
[image: Email:]
kgrierson at cm.law
*Please note: Culhane Meadows is now CM Law*
<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>
*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Jessica R. Friedman via E-trademarks
*Sent:* Wednesday, February 19, 2025 4:18 PM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Jessica R. Friedman <jrfriedman at litproplaw.com>
*Subject:* [E-trademarks] Proving that a corp. converted from an LLC owns
trademarks registered by the LLC
EXTERNAL EMAIL
This follows my earlier email about a company that *converted* from *XYZ
LLC* to *XYZ ABC Corp*., and then assigned its trademarks to a new client
of mine, who wants to record that assignment in the PTO.
My problem is that XYZ ABC Corp, the putative assignor, is not listed as
the registrant and I have nothing to show how XYZ ABC Corp. became the
owner of the trademarks other than a conversion document that doesn’t even
mention trademarks or any assignment of assets, let alone goodwill, since,
apparently, when you do a statutory conversion, no such assignment is
required. (The company can even keep its old EIN.)
Is there any chance of the PTO’s accepting a conversion plan as a *de facto*
assignment of trademarks from XYC LLC to XYZ ABC Corp., when the conversion
plan says nothing at all about an assignment of assets? Or any chance of
their being persuaded that no such assignment is necessary?
Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com
URL: www.literarypropertylaw.com
[image: 1479430908386_PastedImage]
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