Trademarks in the Deal: Chain of Title, Security Interests, and the Anti-Assignment-in-Gross Rule
By Casey Scott McKay ·
A trademark is not a piece of property that travels on its own — it is a symbol of goodwill, and United States law refuses to let the symbol move without the thing it symbolizes. This article explains the anti-assignment-in-gross rule codified at 15 U.S.C. § 1060, the cases that built it, and why a defective assignment does not merely fail: it can restart the assignee's priority date at zero and hand the assignor an abandonment problem. It then walks the four ways chain of title actually breaks in real deals — the founder who owns the mark personally, the vanished entity, the intent-to-use application that was assigned too early, and the nunc pro tunc paper that cannot rewrite history. It explains the recordation regime and the bona fide purchaser rule of § 1060(a)(4), including the three-month window that is a safe harbor rather than a grace period. Finally it maps where trademark security interests are actually perfected — UCC Article 9 at the state level, with a USPTO recordation for notice — and why that answer diverges sharply from the Copyright Act regime of In re Peregrine, a divergence that forces lenders to make three different filings for one company's intellectual property. The closing sections identify what remains genuinely unsettled, from the meaning of "substantially similar" goods to whether a secured party counts as a purchaser under the Lanham Act.
IP and Technology > Trademarks | Article | Published 11 December 2023 - Updated 11 April 2026 | Casey Scott McKay - marksy.us
Summary. A trademark is not a piece of property that travels on its own — it is a symbol of goodwill, and U.S. law refuses to let the symbol move without the thing it symbolizes. This article explains the anti-assignment-in-gross rule codified at 15 U.S.C. § 1060, the cases that built it, and why a defective assignment does not merely fail: it can restart the assignee's priority date at zero and hand the assignor an abandonment problem. It then walks the four ways chain of title actually breaks in real deals — the founder who owns the mark personally, the vanished entity, the intent-to-use application assigned too early, and the nunc pro tunc paper that cannot rewrite history. It explains the recordation regime and the bona fide purchaser rule of § 1060(a)(4), including the three-month window that is a safe harbor rather than a grace period. Finally it maps where trademark security interests are actually perfected — UCC Article 9 at the state level, with a USPTO recordation for notice — and why that answer diverges sharply from the Copyright Act regime of In re Peregrine, a divergence that forces lenders to make three different filings for one company's IP.
Keywords: trademark assignment · assignment in gross · goodwill · chain of title · section 1060 · trademark due diligence · security interest · ucc article 9 · uspto recordation · bona fide purchaser · intent-to-use assignment · nunc pro tunc assignment · void ab initio · trademark collateral · in re peregrine · roman cleanser · priority date · m&a trademark diligence
This is premium Marksy content — the full document is available to subscribers.