Failure To Record Trademark Assignment Supports Dismissal

In Muertos Roasters LLC v Luke Schneider the US District Court for the Eastern District of California has dismissed a complaint of infringement, based on USPTO records that failed to reflect an assignment from a parent company. The case is a cautionary tale that demonstrates the importance of recording transfers of ownership.

For many business owners, attempting to keep up with trademark registration records can easily lead to oversights. Some may reasonably believe that a trademark assignment is effective by virtue of a written agreement between parties laying out the intention to transfer a mark. This, however, is not always the case. While a written agreement is certainly necessary, the prima facie evidence of execution afforded by recordation with the USPTO not only makes the assignment binding with subsequent purchasers, but also generally prevents loopholes in enforcement measures. Muertos Roasters illustrates just this.