Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide
By Casey Scott McKay ·
This guide walks a buyer's counsel through trademark due diligence in an acquisition, stage by stage, from the day the letter of intent is signed to the day the last foreign recordal clears. It explains how to scope diligence to deal size and brand materiality, how to build a defensible schedule of marks out of TSDR, the USPTO assignment database, Madrid Monitor, and foreign counsel reports rather than the seller's docket, and how to verify chain of title link by link and cure what is broken. It covers the use, specimen, and maintenance audit that determines whether the registrations you are buying will survive their next filing; the encumbrance search across UCC-1s, recorded security interests, licenses, coexistence and settlement agreements, and consents; and the litigation and TTAB docket review that reveals what the seller has already promised away. It then turns to deal terms, with annotated model representations, a special indemnity, and an escrow trigger table that sizes each holdback to the finding that generated it. It closes with the closing deliverables list, the post-closing recordation calendar including the three-month window of 15 U.S.C. § 1060(a)(4), and the integration or rebranding plan that determines whether the asset is still there in five years. A single acquisition is carried through every stage as a worked example, with realistic costs, timelines, and the traps that cost buyers money.
IP and Technology > Trademarks | Guide | Published 28 May 2024 - Updated 11 June 2026 | Casey Scott McKay - marksy.us
Summary. This guide walks a buyer's counsel through trademark due diligence in an acquisition, stage by stage, from the day the letter of intent is signed to the day the last foreign recordal clears. It explains how to scope diligence to deal size and brand materiality, how to build a defensible schedule of marks out of TSDR, the USPTO assignment database, Madrid Monitor, and foreign counsel reports rather than the seller's docket, and how to verify chain of title link by link and cure what is broken. It covers the use, specimen, and maintenance audit that determines whether the registrations you are buying will survive their next filing; the encumbrance search across UCC-1s, recorded security interests, licenses, coexistence and settlement agreements, and consents; and the litigation and TTAB docket review that reveals what the seller has already promised away. It then turns to deal terms, with annotated model representations, a special indemnity, and an escrow trigger table that sizes each holdback to the finding that generated it. It closes with the closing deliverables list, the post-closing recordation calendar, and the integration or rebranding plan that determines whether the asset is still there in five years.
Keywords: trademark due diligence · m&a trademark diligence · chain of title · schedule of marks · tsdr · uspto assignment records · ucc-1 search · encumbrance search · coexistence agreement · ttabvue · representations and warranties · indemnity escrow · closing deliverables · assignment recordation · madrid transfer mm5 · specimen audit · section 8 declaration · post-closing recordation · rebranding plan · social handle transfer
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