Trademark Due Diligence Checklist: Chain of Title, Encumbrances, and Deal Risk

By Casey Scott McKay · 2024-10-14

This is the working checklist for the lawyer running a trademark diligence workstream, from the scope memo in week one to the last foreign recordal six months after closing. Eleven phases cover scoping, building a verified schedule of marks from three independent sources, testing every link in the chain of title for capacity, authority, form, and goodwill, auditing use and specimens against the next maintenance filing, searching for liens where they actually hide, reading the coexistence and settlement agreements that quietly cap the buyer's growth model, working the TTAB and federal docket, securing domains and social accounts that no assignment reaches, converting each finding into exactly one deal mechanism, assembling closing deliverables in local form, and recording inside the three-month window of 15 U.S.C. § 1060(a)(4). Every item names the rule, the fee, the form, or the office it depends on. A single $18.4 million candle-brand acquisition runs through all eleven phases as a worked example, including the founder-held registration, the dissolved Illinois assignor, the intent-to-use application that dictated the closing date, and the four-year-old settlement agreement that took $1.4 million off the price. A Common Mistakes section and a consolidated deadlines table close it out.

IP and Technology > Trademarks | Checklist | Published 14 October 2024 - Updated 10 November 2025 | Casey Scott McKay - marksy.us

Summary. This is the working checklist for the lawyer running a trademark diligence workstream, from the scope memo in week one to the last foreign recordal six months after closing. Eleven phases cover scoping, building a verified schedule of marks from three independent sources, testing every link in the chain of title for capacity, authority, form, and goodwill, auditing use and specimens against the next maintenance filing, searching for liens where they hide, reading the coexistence and settlement agreements that quietly cap the buyer's growth model, working the TTAB and federal docket, securing domains and social accounts that no assignment reaches, converting each finding into exactly one deal mechanism, assembling closing deliverables in local form, and recording inside the three-month window of 15 U.S.C. § 1060(a)(4). Every item names the rule, the fee, the form, or the office it depends on, and a single $18.4 million candle-brand acquisition runs through all eleven phases as a worked example.

Keywords: trademark due diligence · chain of title · assignment in gross · section 1060 · uspto assignment recordation · ucc-1 search · security interest · encumbrance clearance · schedule of marks · intent-to-use assignment · section 1055 related company · coexistence agreement · closing deliverables · post-closing recordation · section 8 declaration · madrid mm5 · ttab substitution · escrow holdback · void ab initio · m&a trademark checklist

What this checklist is for. Running a trademark diligence workstream end to end on a live deal. The doctrine behind it — why a mark cannot travel without its goodwill, what the three-month recordation window does, where a security interest in a mark is perfected — is in Trademarks in the Deal. The narrative walkthrough, with model clauses and annotated representations, is in Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide. This document re-teaches neither. It tells you what to do, in what order, and what "done" looks like.

Who should use it. Buyer's IP counsel on an acquisition, financing, or carve-out; seller's counsel preparing a portfolio for sale; in-house counsel cleaning up title before a process starts; lender's counsel perfecting against brand collateral. Sell-side readers should work these phases twelve months early — every finding below is cheaper to fix before a buyer finds it.

What you'll need before you start. The LOI; the buyer's model showing how much of the price is brand; the target's full legal name, every prior name, every d/b/a, and its state of organization; access to TSDR, the USPTO Trademark Assignment Search, TTABVUE, PACER, and WIPO's Madrid Monitor; a budget for certified UCC searches and foreign counsel; and a tracker with six columns — finding, authority, curable before closing (Y/N), mechanism, owner, status.

| Phase | What it produces | Elapsed time | Owner | |---|---|---|---| | 1. Scope | Signed one-page scope memo and budget | Days 1-5 | Lead IP counsel | | 2. Asset inventory | Schedule of marks reconciled from three sources | Weeks 1-3 | IP associate | | 3. Title verification | Link-by-link chain report and cure plan | Weeks 2-5 | Lead IP counsel | | 4. Use and maintenance audit | Item-level use evidence, specimen review, deadline calendar | Weeks 2-4 | IP associate | | 5. Encumbrances | Lien schedule, payoff letters, UCC-3 authorizations | Weeks 2-5 | Corporate + IP jointly | | 6. Third-party agreements | Restrictions matrix and consent list | Weeks 2-5 | Lead IP counsel | | 7. Disputes | Docket report with deadlines inside 120 days of closing | Weeks 3-5 | Litigation counsel | | 8. Unregistered and digital assets | Common-law evidence file, domain and account transfer plan | Weeks 3-6 | IP associate | | 9. Deal documents | Reps, special indemnity, escrow triggers, price adjustments | Weeks 5-8 | Deal team | | 10. Closing deliverables | Executed assignments in every required local form | Closing week | Lead IP counsel | | 11. Recordation | U.S. recordation inside 90 days; foreign recordals confirmed | Days 1-180 post-closing | IP associate |

The worked example. Brightleaf Brands, a Delaware corporation, is buying Tallow & Tine LLC, a Tennessee candle maker, for $18.4 million in a cash asset purchase. Dana Okonkwo is founder and sole member. LOI signed 3 March, diligence kicked off 24 March, signing targeted for 22 May, closing for 30 June. Each phase closes with what it actually produced.

Phase 1 — Scope the workstream and set the calendar

[ ] Write a one-page scope memo naming the deal structure, the brand's share of the purchase price, the buyer's expansion plan, the material jurisdictions, the materiality threshold, and the fee estimate — and get it signed before anyone bills a second hour.
[ ] State the structure in one line and, on the same line, the title work it forces: stock purchase (nothing moves; confirm the target entity holds title and hunt change-of-control clauses); statutory merger (title passes by operation of law; you need a certificate of merger for the record); asset purchase (nothing moves without a signed instrument, and recordation is critical path); carve-out (part of the goodwill moves, and you will need transitional licenses in both directions).
- Authority. 15 U.S.C. § 1060(a)(1) — the second clause is what makes a divisional sale lawful.
[ ] Set the materiality threshold numerically: any mark on goods generating more than 2% of revenue, any mark on primary packaging, any registration in a top-five revenue jurisdiction, and every agreement restricting use or registration of any mark regardless of size.
- Trap. Scoping by portfolio size instead of revenue concentration. Four registrations carrying the enterprise value need more scrutiny than 140 that carry none.
[ ] Name, in writing, one lawyer who owns the seam between IP counsel and corporate counsel.
- Why. The most-missed encumbrance in trademark deals is a UCC-1 covering "all general intangibles." IP counsel searches the USPTO and finds nothing; corporate counsel files the financing statement under general lien clearance. Nobody owns the overlap.
[ ] Ask the buyer's business team in writing what they will sell under these marks, to whom, and where, over three years — and keep the answer visible, because assignment validity is judged partly by post-closing use. Sugar Busters, L.L.C. v. Brennan, 177 F.3d 258, 265-66 (5th Cir. 1999).
[ ] Calendar backwards from the target closing date the three things that cannot be compressed: foreign chain-of-title reports (two to four weeks), entity reinstatement (three to six weeks), and any statement of use needed to make an intent-to-use application assignable.

On the deal. Standard scope, budgeted $95,000, spent about $118,000 — roughly $40,000 of it curative work no budget anticipates. The intent-to-use problem surfaced on day nine and set the closing date.

Phase 2 — Build the schedule of marks

[ ] Request the seller's docket export in native CSV or XLSX with all fields — internal reference numbers, responsible-attorney field, status codes — not a PDF summary. The gaps in the seller's own docket show where its records are weakest.
[ ] Search the USPTO by owner name for the current legal name, every prior name, every d/b/a, every affiliate, the founder's personal name, and plausible misspellings; run the same list through the Trademark Assignment Search.
- Trap. Searching only the name on the LOI. Filings sit under whatever a filing mill typed into the owner field, which is exactly where void-ab-initio problems live.
[ ] Pull the full TSDR record for every hit and save a dated PDF. Read the Documents tab, not just Status — office actions, specimens as filed, and post-registration correspondence live there.
[ ] Walk the business: website, primary packaging, wholesale line sheet, app store listings, SKU master, trade-show photos, twelve months of invoices. Every product name, sub-brand, tagline, and collection name on that sweep is an asset, registered or not. Then search the state registers in any state with meaningful revenue — no federal search shows them.
[ ] Pull any international registration from Madrid Monitor directly and record four things: every designated Contracting Party including subsequent designations, any provisional refusal never resolved, the date the five-year dependency period ends, and whether the buyer entity is itself entitled to hold the IR.
- Authority. Madrid Protocol art. 2(1) (entitlement), art. 6(3) (dependency), art. 9quinquies (transformation). See The Madrid Protocol and WIPO Office Actions and Provisional Refusals.
- Trap. A Cayman or Jersey acquisition vehicle may not be entitled to hold an international registration. Learn that before the structure locks.
[ ] Add the cloned UK comparable rights for every EU trade mark registered before 1 January 2021 — separate numbers (the EUTM number prefixed with UK009), separate renewal dates, separate recordal.
[ ] Instruct foreign counsel with four numbered questions per jurisdiction: the proprietor quoted verbatim from the register, the complete recorded chain with document dates, all recorded encumbrances and licenses, and the form requirements for an assignment (notarization, legalization, apostille, wet-ink original, local-language deed). Budget $350-$1,200 and two to four weeks each.
- Trap. Associates confirm a mark is "registered and in force" without saying in whose name. Half of all international title defects surface only because someone demanded the verbatim quote.
[ ] Search the marks in first-to-file jurisdictions independently of the target's records, looking for distributor and agent filings.
[ ] Build the schedule off the Trademark Portfolio Inventory template and add the diligence fields: filing basis (§ 1(a), § 1(b), § 44(d), § 44(e), § 66(a)), record owner exactly as printed, the entity that actually uses the mark, goods verbatim, next maintenance deadline, recorded encumbrances, related agreements, live proceedings — and a last column: does the buyer want it?

On the deal. Thirteen assets against the seller's list of six, including a cloned UK right nobody had docketed and a Guangdong distributor's Class 3 filing for TALLOW & TINE in its own name — an agent filing attackable under Article 15 of the Chinese Trademark Law, but not from Nashville and not in three weeks.

Phase 3 — Verify chain of title, link by link

[ ] For every material asset, build the chain from the original applicant forward in a table: instrument date, recordation date, reel and frame, assignor, assignee, nature of conveyance, and whether you have read the document image.
[ ] Download and read the image of every recorded instrument. Never work from the cover-sheet abstract.
- Authority. 37 C.F.R. § 3.54 — recording "is not a determination by the Office of the validity of the document or the effect that document has on the title."
- Trap. The Assignment Recordation Branch records what it is given. An unsigned draft behind a confident cover sheet looks exactly like a real assignment.
[ ] Test each link four ways and write the answers down: capacity (did the assignor exist and have power to convey on the instrument date — pull good-standing certificates); authority (does the signature block's title match the operating agreement or bylaws); form (a signed writing, as 15 U.S.C. § 1060(a)(3) requires); goodwill in fact (does the instrument recite goodwill and do the facts support it).
- Why. Every assignment held void in PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969), Sugar Busters, 177 F.3d 258, and Clark & Freeman Corp. v. Heartland Co., 811 F. Supp. 137 (S.D.N.Y. 1993) recited goodwill. The recital is necessary and never sufficient.
[ ] Where a registration stands in a founder's or affiliate's name, ask the § 1055 question about use, not paper: who decided what the product would be, who approved the specification, who fielded the complaints? 15 U.S.C. §§ 1055, 1127; TMEP § 1201.02(b)-(c). Then take the declaration under penalty of perjury and make it name artifacts — dated specification sheets, approval emails, a signed quality manual — not the statutory standard. Gather them with the Trademark License Quality Control Checklist; the doctrine it defends against is Naked Licensing.
[ ] Where a link is missing but the transfer really happened, take a confirmatory assignment reciting the earlier transfer, the consideration, the goodwill of the business symbolized by the marks, and an express grant of accrued claims for past infringement. Start from the Trademark Assignment Agreement template; budget $2,000-$5,000 and one to two weeks.
- Trap. A general grant of "all right, title, and interest" is often read not to carry accrued causes of action. If the buyer wants to sue over pre-closing infringement, the words must be there.
[ ] Where the assignor is dissolved, check the state's reinstatement statute for availability and retroactivity before drafting. Reinstate, execute, dissolve again: three to six weeks, $1,500-$6,000 with back fees.
[ ] Where the original application was filed by an entity that did not own the mark on the filing date and § 1055 does not save it, stop trying to fix it. Refile, reprice, and clear the intervening period.
- Authority. 37 C.F.R. § 2.71(d) permits correcting how a name is set out but forbids substituting a different entity; Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007) (shared officers and premises do not create related-company status).
[ ] Screen every pending application for a § 1(b) basis and confirm no assignment is executed before an amendment to allege use or a statement of use is filed — unless the buyer is a successor to the applicant's ongoing business, and the instrument says so.
- Authority. 15 U.S.C. § 1060(a)(1); Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d 1098 (T.T.A.B. 1996). Mechanics in From Notice of Allowance to Registration and the Statement of Use Filing Checklist; if the clock is tight, the SOU extension template buys six months.
- Trap. Order of operations decides validity. Close Tuesday, file the statement of use Friday, and Tuesday's assignment may be void. Reverse them and identical economics produce a clean transfer.
[ ] If the assignment is executed while an application is still pending and the buyer wants the certificate in its own name, record before the registration issues. 15 U.S.C. § 1057(d); TMEP ch. 500.
[ ] Refuse to treat a nunc pro tunc assignment as a cure for a transfer that never happened. It documents history; it cannot create it, and it confers no retroactive standing. Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998).

On the deal. Okonkwo's § 1055 facts were strong — six years of fragrance-approval emails — so a declaration plus a confirmatory assignment cleared the TALLOW & TINE word mark. TINE required reinstating Wickwood Ltd. in Illinois solely to sign: four weeks, $4,800, one very confused former officer. The HEARTH & HOLLOW statement of use went in on 12 June; the assignment was dated 30 June.

Phase 4 — Audit use, specimens, and maintenance

[ ] Copy each registration's identification of goods verbatim into a worksheet and demand, item by item, current proof of sale in commerce: a dated invoice, a sales report by SKU, a photograph of current packaging.
- Why. The § 8 declaration is sworn item by item, and so is the risk. Three consecutive years of non-use is prima facie abandonment. 15 U.S.C. § 1127; see Use It or Lose It.
- Trap. Accepting an aggregate statement that the mark "is in use." That sentence is true of nearly every registration and tells you nothing about the twelve goods you are buying.
[ ] Pull the actual specimens from TSDR and look at them. Flag digital mockups, webpage screenshots with no means of ordering, ornamental hangtags, and service-mark specimens that never mention the services. Taxonomy in Specimen Refusals.
[ ] Build the maintenance calendar for every asset, U.S. and foreign, and flag anything due within eighteen months of closing or already in a grace period. Put § 66(a)-based U.S. registrations on their own line: they maintain under 15 U.S.C. § 1141k, not § 1058, while the international registration renews through WIPO on its own ten-year cycle.
[ ] Score the portfolio for ex parte attack. Expungement under 15 U.S.C. § 1066a reaches goods never used in commerce; reexamination under § 1066b reaches goods not in use as of the relevant date and runs during the first five years after registration. Either can be requested by any person at $400 per class.
[ ] Check whether any post-registration filing drew a proof-of-use audit, 37 C.F.R. § 2.161(b). Deleting goods after a declaration is submitted but before acceptance costs $250 per class.
[ ] Write into the purchase agreement who prepares, who signs, who pays, and — the part everyone forgets — who decides which goods get deleted on any § 8 due within twelve months of closing. See Filing a Section 8 Declaration, the Section 8 & 9 Renewal Checklist, and the Section 8 Declaration template.
[ ] Escalate any registration where a truthful declaration cannot be signed as a fraud question, not a maintenance question. The standard is high — a knowing false statement of material fact with intent to deceive, In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009) — but a registration maintained by fraud is cancellable at any time, 15 U.S.C. § 1064(3); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48-49 (Fed. Cir. 1986). Work it with the Trademark Fraud Claim and Self-Audit Checklist.
[ ] Plan the narrowing of any identification that has outgrown the business rather than defending goods nobody sells. Drafting an Identification of Goods and Services; Goods and Services Identification Checklist; The Nice Classification System.

On the deal. The TINE registration's § 8 fell due eleven months after closing on "scented sachets, potpourri, and room sprays." Room sprays had not shipped since 2021. Brightleaf took the filing obligation and deleted them; the seller's counsel wanted to keep them, which tells you why the buyer should hold the pen.

Phase 5 — Search for liens and security interests

[ ] Order certified UCC searches in the office of the debtor's location — for a registered organization, its state of organization, not where the warehouse is. U.C.C. §§ 9-301(1), 9-307(e).
[ ] Search every prior name and prior state of organization too, and add federal and state tax lien and judgment lien searches.
- Why. A financing statement stays effective four months after a name change that makes it seriously misleading, U.C.C. § 9-507(c); one year after the debtor relocates, § 9-316(a)(2); one year after collateral moves to a new debtor, § 9-316(a)(3). A lien can be perfected under a name and in a state that appears on no current search.
[ ] Read the collateral descriptions, not the search summary. "All assets" and "all general intangibles" both capture the marks: registered and unregistered trademarks, applications, license rights, and their goodwill are general intangibles, U.C.C. § 9-102(a)(42), and the interest attaches without the word "trademark" appearing anywhere.
[ ] Search USPTO assignment records for security interests and treat both outcomes as findings — a live interest is an encumbrance to clear, and a stale one with no release clouds the record for every future buyer.
- Why. Perfection is an Article 9 matter, so many lenders never record at the USPTO at all. In re Roman Cleanser Co., 43 B.R. 940 (Bankr. E.D. Mich. 1984), aff'd, 802 F.2d 207 (6th Cir. 1986); In re Cybernetic Services, Inc., 252 F.3d 1039, 1045-58 (9th Cir. 2001).
[ ] For each lien, obtain a payoff letter that states the amount, irrevocably commits the holder to release on receipt, and authorizes the buyer to file UCC-3 termination statements — plus a separately recordable USPTO release.
- Trap. A payoff letter is not a recordable document, and the secured party will not file the UCC-3 for you. Take the authorization under U.C.C. § 9-509 and file it yourself. Where a paid lender goes quiet, U.C.C. § 9-513(c) compels a termination statement within twenty days of an authenticated demand.
[ ] Check whether registered copyrights sit in the same collateral package — packaging art, photography, code — because perfection there happens somewhere else. In re Peregrine Entertainment, Ltd., 116 B.R. 194 (C.D. Cal. 1990); In re World Auxiliary Power Co., 303 F.3d 1120, 1126-32 (9th Cir. 2002). Run the Copyright Ownership and Chain-of-Title Checklist in parallel.
[ ] Confirm no intent-to-use application was ever granted as collateral in assignment language. Clorox, 40 U.S.P.Q.2d 1098. If a security agreement "assigns" an ITU application, the application may already be gone.

Phase 6 — Read every third-party agreement, including the ones filed under "closed"

[ ] Request and read in full, with exhibits and schedules: outbound, inbound, and intercompany licenses; coexistence agreements; settlement agreements; consents to register; distribution and manufacturing agreements; franchise and dealer agreements; and any prior assignment containing a retained-rights carve-out.
[ ] Build a restrictions matrix, one row per agreement: mark, counterparty, restricted goods, restricted territory, restricted channel, term, and the column that matters — does this block the buyer's stated plan?
[ ] Test every outbound license for real quality control: written standards, an inspection right, and evidence the licensor exercised it. A naked license is an abandonment risk that transfers with the mark. Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596-98 (9th Cir. 2002). Remediation drafting in Drafting a Trademark License That Survives and the Trademark License Agreement template.
[ ] Treat every inbound license as presumptively non-assignable without the licensor's consent and add it to the consent list. In re XMH Corp., 647 F.3d 690, 695 (7th Cir. 2011). Article 9's override does not make the interest enforceable against the licensor. U.C.C. § 9-408(d).
[ ] Ask two separate questions of each agreement: does it prohibit assignment, and does it independently trip on a change of control? In a merger or stock deal nothing is technically assigned and a well-drafted clause still bites. Start the consent list in week two — a licensor with a veto takes six weeks to say yes and prices accordingly.
[ ] Read every consent to register in the prosecution file. Consent agreements carry real weight in the DuPont analysis, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) — which means their restrictions are real too. Compare the Coexistence Agreement template, and price every coexistence and settlement restriction against the buyer's model, not the current business.
[ ] Do not assume a later bankruptcy clears inherited licenses. Rejection of a trademark license is a breach, not a rescission, and the licensee keeps using the mark. Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019); trademarks are excluded from "intellectual property" in 11 U.S.C. § 101(35A), so § 365(n) never applied.

The most expensive finding in trademark diligence is usually a settlement agreement the seller calls "resolved years ago." It does not affect this year's revenue by a dollar, which is exactly why nobody puts it on the IP schedule — and it can permanently cap the category the buyer's model says it is entering.

Phase 7 — Work the dispute and enforcement docket

[ ] Search TTABVUE, PACER, state dockets in the target's home county, UDRP provider archives, and CBP's recordation database — by party name and by mark — and never from the seller's litigation schedule alone.
- Why. Searching by mark catches proceedings brought under a predecessor's name, which is where an inherited title problem usually shows itself.
[ ] Read the correspondence files: demand letters sent and received, watch-service notices, platform takedowns, and the email in which former counsel told a complainant "our client has no objection to your use." That email is a consent, or close enough that a court may treat it as acquiescence.
[ ] For each live matter, extract claims and defenses, procedural posture and the next three deadlines, surviving settlement obligations, positions that will bind or embarrass the buyer, and realistic cost to conclude.
- Trap. The admissions. A target that argued its own mark was weak, that a term was descriptive, or that a category was unrelated made a concession the buyer inherits, and it appears on no schedule. Context in Federal Court vs. TTAB and TTAB Proceedings: Opposition vs. Cancellation.
[ ] Calendar every proceeding deadline inside 120 days of the target closing date and give each a named owner and a budget line in the purchase agreement.
- Why. Board deadlines do not adjust for corporate events. A testimony period opening eighteen days after closing, with no substituted party and no engaged counsel, is a default waiting to happen. See Understanding TTAB Discovery and the TTAB Practice Toolkit.
[ ] Plan the substitution now: TBMP § 512.01 for Board proceedings, which generally requires the assignment to be recorded first, and Fed. R. Civ. P. 25(c) for pending federal actions.
[ ] List every CBP recordation to be re-recorded after the assignment (19 C.F.R. pt. 133) and every marketplace brand-registry enrollment to be re-established. Stopping Counterfeits at the Border; Anticounterfeiting Program Checklist.
[ ] Assess the enforcement the seller never did. Three years of unpoliced third-party use is a measurable weakness in any later confusion analysis and a buyer's budget line. Proving Likelihood of Confusion; Pre-Litigation Enforcement Checklist.

On the deal. Tallow & Tine was the opposer against TALLOW + THYME, a Portland soap brand, with trial dates set — a case Brightleaf did not want, in a category its coexistence agreement said it could never enter. Settled for a phase-out and $18,000 within ninety days of closing, because it was identified and assigned to a named lawyer before signing.

Phase 8 — Secure the unregistered and digital assets

[ ] Collect date-stamped first-use evidence, sales by territory, advertising spend, and third-party recognition for every unregistered mark on the schedule. Use the Common-Law Priority Evidence Checklist; the reach question is Where Your Trademark Rights End. Then pick the two or three worth filing on and have the seller file pre-closing at the buyer's direction — a $2,000-$4,000 decision that materially improves the asset.
[ ] Verify domain ownership through the registrar account, not WHOIS, and capture registrar, account holder, expiry, auto-renew state, registrar and transfer locks, DNS control, and credentials.
- Trap. ICANN's Transfer Policy imposes a 60-day inter-registrar transfer lock after a change of registrant unless the prior registrant opts out. Sequence the registrant change and the registrar move, or the domain sits frozen for two months after closing.
[ ] Search for typosquats and for the defensive registrations the target should have and does not. UDRP vs. Federal Lawsuit; Cybersquatting and the ACPA; Filing a UDRP Complaint; Online Brand Protection Toolkit.
[ ] For every social, marketplace, app store, advertising, analytics, and email-service account, obtain administrator rights, credentials, recovery email addresses, recovery phone numbers, and multi-factor authentication seeds, plus a signed release from every individual who has ever administered it.
- Why. Platforms do not recognize assignments; accounts are licenses under terms of service, and what you can acquire is control. A court will not assume the company owns an account a person built, JLM Couture, Inc. v. Gutman, 91 F.4th 91 (2d Cir. 2024), though a business account can be estate property, In re CTLI, LLC, 528 B.R. 359, 366-72 (Bankr. S.D. Tex. 2015).
[ ] Run the trade-secret workstream alongside this one — formulas, specifications, supplier terms, and customer lists are frequently what makes the goodwill transfer real rather than recited. Trade Secrets and the DTSA; Trade Secret Protection and Departure Checklist; Trade Secret Protection Toolkit.
[ ] Chase the copyright chain of title in brand photography, packaging art, and website code — usually freelance work with no written assignment. Who Owns the Work.
[ ] Decide whether the packaging or product configuration is protectable trade dress before you pay for it. Trade Dress and the Functionality Doctrine; Trade Dress Protection Checklist.

On the deal. The 1.9 million-follower Instagram account sat on Okonkwo's personal email and had been run for three years by a freelance social manager with no written agreement — who also owned the recovery phone number. $7,500 bought a release and a clean handoff. After closing, that is a negotiation with the leverage on the other side.

Phase 9 — Convert findings into deal terms

[ ] Assign each finding exactly one outcome — cure before closing, condition closing on it, indemnify, reprice, or accept — and record the choice. No finding gets two, and none gets zero.
[ ] Draft the title representation to say that each assignment in the chain was executed by a person with capacity and authority, conveyed the goodwill of the business, and was not an assignment in gross. That clause converts a doctrinal risk into a contract claim. Resist a knowledge qualifier on it: a seller may not know its chain is broken, and the buyer should not carry that.
[ ] Enumerate the encumbrance types in the no-restrictions rep — consent, coexistence, settlement, judgment, injunction, order, decree, license — because "coexistence agreement" jogs a seller's memory in a way that "encumbrance" does not. Add the written-notice tail to the claims rep; most surprises are demand letters the seller never treated as claims.
[ ] Insist on "and as currently proposed to be conducted" in the sufficiency rep if the buyer has a documented expansion plan. It is the first phrase sellers strike.
[ ] Carve identified findings out of the deductible and cap into a special indemnity with buyer control of defense and settlement.
- Why. A seller controlling the defense of an inherited opposition optimizes for cost and may settle into a coexistence restriction that binds the buyer for a generation.
[ ] Size each holdback to its own release event rather than pooling: foreign recordals at $1,500-$4,000 per jurisdiction plus contingency, released on written register confirmation; unreleased liens at 110% of payoff, released on a filed UCC-3 and a recorded USPTO release; a void-ab-initio refiling held until the registration issues.
[ ] Brief the representation and warranty insurance underwriter early and expect every identified finding to be excluded by name — an argument for a specific indemnity, not for a vaguer memo.
[ ] Raise the tax characterization with the deal team: acquired marks are § 197 intangibles amortized over fifteen years, 26 U.S.C. § 197(d)(1)(F), and a "sale" in which the transferor keeps significant powers can be recharacterized as a license, 26 U.S.C. § 1253. The threshold distinction is Assignments vs. Licenses.

Phase 10 — Assemble and execute the closing deliverables

[ ] Prepare two assignment documents: a long-form agreement with the schedule of marks, goodwill language, accrued claims, and indefinite further assurances; and a one-page short form for recordation with no economics in it.
- Trap. Recording the full agreement publishes the purchase price to every competitor who runs an assignment search.
[ ] Collect jurisdiction-specific assignments in the exact local form identified in Phase 2 — notarized, legalized, apostilled, bilateral, or wet-ink as required — signed before the wire and held undated in counsel's escrow.
- Trap. One global assignment for eighteen countries. Several registries reject it outright, and the fix needs a new signature from a seller who has been paid and dissolved the selling entity.
[ ] Prepare WIPO form MM5 for any international registration, with confirmation the transferee is entitled to hold it. Madrid Common Regulations r. 25; the fee for recording a total change in ownership is currently 177 Swiss francs.
[ ] Collect the Phase 3 curative instruments: confirmatory assignments, reinstated-entity signatures, founder assignments, and the § 1055 declaration with exhibits.
[ ] Make delivery of payoff letters, UCC-3 authorizations, and recordable USPTO releases a condition precedent to closing.
[ ] Collect third-party consents, powers of attorney in each registry's form, domain authorization (EPP) codes with locks removed, account credentials, and personal account releases.
[ ] Send a written instruction to the seller's trademark counsel to transfer prosecution files, docket records, and pending deadlines, and get a confirmation back.
[ ] Circulate a one-page order of operations memo for closing week: statement of use before assignment; releases at or before closing; the assignment's effective date fixed and known to everyone who will calendar from it.

Phase 11 — Record everything, on the clock

[ ] Day 0: confirm the assignment's effective date and calendar closing + 90 days as a hard deadline, not a target.
- Authority. 15 U.S.C. § 1060(a)(4). Recording within three months protects against every subsequent purchaser; recording later still beats anyone who buys after you record.
[ ] Days 1-5: record the short-form assignment through the USPTO's electronic assignment recordation system, on a cover sheet identifying the conveying party, the receiving party with entity type and citizenship, the nature of conveyance, the execution date, the correspondent, and every serial and registration number. 37 C.F.R. §§ 3.11, 3.25, 3.31; fee under § 2.6(b)(6) — $40 first property, $25 each additional. Mechanics in the Trademark Assignment Recordal Checklist.
[ ] Days 1-5: file UCC-3 termination statements for every cleared lien. U.C.C. § 9-513.
[ ] Days 5-15: pull the assignment record and confirm the reel and frame numbers and that every property on the cover sheet actually posted.
[ ] Days 5-20: update the owner of record and the correspondence address on every registration, then pull TSDR and confirm both changed. TMEP ch. 500.
- Trap. This is the item that kills registrations. Recording and updating are two tasks; skip the second and the § 8 notice goes to a dissolved entity at an address nobody monitors while the grace period runs. Docketing Deadlines; Trademark Renewal Deadlines Explained.
[ ] Days 5-30: file MM5 with WIPO and instruct local counsel to record in each national registry, including the cloned UK rights.
[ ] Days 10-45: substitute or join the buyer in every pending proceeding. TBMP § 512.01; Fed. R. Civ. P. 25(c).
[ ] Days 15-45: update CBP recordations and re-establish marketplace brand-registry enrollments.
[ ] Days 15-60: move domains out of escrow, re-enable registrar locks, confirm DNS control.
[ ] Day 90: hard stop. Confirm U.S. recordation is complete and visible in the public record.
[ ] Days 60-180: track foreign recordals and release each escrow tranche only on written confirmation from local counsel that the register shows the buyer as proprietor.
[ ] Day 180: reconcile the full docket into the buyer's system with buyer's counsel as correspondent, turn on watch services (Trademark Watch Services), execute the Phase 6 license remediation, and set the first Annual Portfolio Review.

Common Mistakes

Searching only the target's current name. The founder-held registration, the predecessor's application, and the affiliate's forgotten mark all sit under other names.
Reading cover sheets instead of documents. Recordation is ministerial, 37 C.F.R. § 3.54, and unsigned drafts get recorded every week.
Treating the goodwill recital as the analysis. Every assignment held void in the leading cases recited goodwill.
Assigning an intent-to-use application before the statement of use. 15 U.S.C. § 1060(a)(1); Clorox, 40 U.S.P.Q.2d 1098. A sequencing error, not a drafting error, and unfixable afterward.
Using a nunc pro tunc assignment to invent a transfer. Fine for memorializing what happened; useless for what did not.
Searching for UCC-1s where the business operates rather than where the debtor is organized. U.C.C. § 9-307(e).
Letting the "all general intangibles" financing statement fall into the seam between IP counsel and corporate counsel.
Skipping the settlement and coexistence agreements because they are filed under "litigation, closed."
Accepting an aggregate use statement instead of item-level proof against the identification of goods.
Recording the assignment and stopping. Owner of record and correspondence address are separate updates.
Assuming the acquired priority date survives a category jump. If the buyer will sell something materially different, treat it as a fresh adoption plus a covenant, clear it properly (Trademark Clearance Searching; Running a Full Trademark Clearance Search; Trademark Clearance Search Checklist), and price it that way.

Deadlines at a Glance

| Deadline | Length | Runs from | Authority | |---|---|---|---| | USPTO assignment recordation safe harbor | 3 months, or any time before the next purchase | Assignment date | 15 U.S.C. § 1060(a)(4) | | Copyright Office recordation priority window | 1 month domestic / 2 months foreign | Execution of transfer | 17 U.S.C. § 205(d) | | Record before the certificate issues | Before registration | Allowance to issuance | 15 U.S.C. § 1057(d) | | Statement of use after a notice of allowance | 6 months, extendable in 6-month increments to 36 | Notice of allowance | 15 U.S.C. § 1051(d) | | § 8 declaration of continued use | Between the 5th and 6th anniversary; 6-month grace at +$200 per class | Registration date | 15 U.S.C. § 1058 | | Combined § 8 and § 9 renewal | Within the year before each 10-year anniversary; 6-month grace | Registration date | 15 U.S.C. §§ 1058, 1059 | | § 71 affidavit for a § 66(a) registration | Same 5-6 year and 10-year cadence, separate from WIPO renewal | U.S. registration date | 15 U.S.C. § 1141k | | § 15 incontestability | Any time after 5 consecutive years of use | First use after registration | 15 U.S.C. § 1065 | | Reexamination petition | First 5 years after registration | Registration date | 15 U.S.C. § 1066b | | Expungement petition | Years 3 through 10 after registration | Registration date | 15 U.S.C. § 1066a | | Madrid dependency on the U.S. base | 5 years | International registration date | Madrid Protocol art. 6(3) | | UCC-1 effectiveness after a debtor name change | 4 months | The change | U.C.C. § 9-507(c) | | UCC-1 effectiveness after relocation or transfer | 1 year | The move or transfer | U.C.C. § 9-316(a)(2)-(3) | | Secured party's response to a termination demand | 20 days | Authenticated demand | U.C.C. § 9-513(c) | | ICANN inter-registrar transfer lock | 60 days | Change of registrant | ICANN Transfer Policy | | TTAB substitution of the assignee | No fixed date; generally requires a recorded assignment | Closing | TBMP § 512.01 |

Fees to budget (confirm the current USPTO schedule before quoting): assignment recordation $40 first property and $25 each additional, 37 C.F.R. § 2.6(b)(6); § 8 declaration $325 per class; § 9 renewal $325 per class; § 15 declaration $250 per class; deletion of goods after a declaration is filed but before acceptance $250 per class; expungement or reexamination petition $400 per class; MM5 change of ownership 177 Swiss francs.