When a trademark owner dies, there can be uncertainty in who owns the trademark or whether the trademark is even still valid and subsisting.
There is always an owner of a trademark, usually a company but sometimes an individual. No matter who the trademark owner is, the trademark is valid only so long as it is being used; trademark rights depend on trademark use.
If a company owns a trademark, there are probably many people ensuring continuity of the business. This helps ensure that the trademark will not accidentally become abandoned.
When an individual owns a trademark, there are some risks. One of those is that when a trademark owner dies, the trademark may abandon. This can happen in a few ways.
First, trademarks at the Trademark Office require periodic maintenance. If the trademark owner fails to file the trademark maintenance paperwork in time, the Office will cancel the trademark registration.
Cancellation of a trademark is not the same as abandonment of a trademark. However, one of the other possible consequences of the death of the trademark owner is that there is simply no one who is using the trademark anymore. In other words, if the trademark owner was the only person selling the products or offering the services, then when the trademark owner dies, there won’t be anybody left to sell those products or services. It no one is selling the products or services anymore, then the trademark cannot be used. Therefore, the trademark becomes abandoned.
When a trademark owner dies, the trademark will transfer as an asset of the estate. If it was specifically identified in the will, then it would transfer according to that. If not, then it would be handled in probate like other personal assets.
If a new person or entity is going to take over the trademark and provide the goods or services that the deceased previously did, then the new person should own the trademark. To do that, you must a trademark assignment with the Trademark Office. Most often, this means that the estate’s personal representative will need to sign the assignment.
A trademark attorney or an estate attorney can prepare the trademark assignment. However, if the estate attorney prepares it, he or she must be careful, because there is specific language that must be included when transferring a trademark. That language is not commonly used in other areas of law.
Once the assignment is fully signed, it must be recorded at the Trademark Office to actually effect the name change in the Trademark Office records.