Tags: Assignment, Change Of Name Closing, Closing, Docketing, Intent to Use, License, Loan, Merger, Opinion Letter, Release, Security Agreement, Security Interest, Trademark, Transaction, United States, Worldwide By Lanning G. All that remains is for the parties to “close” the deal.
If all necessary documents have been prepared and issues anticipated and addressed, the Closing can be seamless. All Rights Reserved In many instances, it is critical to understand the transfer of intellectual property as an essential aspect of a larger transaction, not simply the transfer of intellectual property rights by itself.
Furthermore, good organization on a complex transaction can make what would be a long, drawn out-process much smoother and more efficient. On the other hand, intellectual property is very often the predominant factor driving mergers and acquisitions.
The following paper identifies and then discusses many of the most common issues to arise during the Closing and post-Closing of a business transaction involving trademark rights. Bryer, a partner in the New York office of the law firm Ladas & Parry, has written extensively on intellectual property issues. Lebson, Esq., an associate in Ladas & Parry’s New York office, in the writing of this paper, which was first presented by Mr. The transaction should be construed in the context of a sale of an entire business in which those intangible assets are used.
Bryer at the INTA’s Trademarks in Business Transactions Forum in New York City, February 25-26, 2002. Generally, businesses are sold either by the purchase of the stock in a corporation or though a purchase of assets used by the business to be sold.
Under either scenario, two basic sets of documents, an “acquisition agreement” and “transfer documents” will be prepared and negotiated.
Buyer and Seller typically specify conditions that must be present or events that must occur before they are obligated to consummate the deal.
A Seller typically makes representations and warranties about the business as of the date that the acquisition agreement is executed, but that date may be weeks or months prior to Closing, especially if antirust or other regulatory approvals are required in order to close the transaction.
The Buyer will typically require that at Closing, the Seller warrant that the representations are still true.
If certain statements are no longer true, the Buyer might have the option of declining to go through with the transaction as specified.
Other conditions of Closing may reflect issues that come to light during the negotiation of the agreement.
For example, in a stock sale, if the Buyer learns certain trademark rights are not owned by the corporation whose stock is being acquired, it may require that those assets either be transferred to the corporation before Closing or directly to the Buyer at Closing. Assignment – Goodwill – United States of America 2. United States Issues – Intent-to-Use Applications – Verified Statement of Use 4.