IP Due Diligence Toolkit for Mergers, Financings, and Asset Sales

By Casey Scott McKay · 2026-03-07

This toolkit is the cross-discipline guide to intellectual property diligence in a merger, a secured financing, or an asset sale, and it assembles every Marksy document that carries part of the work. It maps the four questions every IP workstream has to answer — what assets exist, who owns them, what has been promised away, and whether the assets will still be there in five years — across trademarks, copyrights, trade secrets, domains, data, and AI-generated material, and it explains why the deal structure decides half the workload before anyone opens a file. Thematic sections walk the schedule of assets, chain-of-title verification asset class by asset class, encumbrance searching across UCC-1s and the agreements that quietly cap a buyer's growth model, the survival audit that predicts whether registrations outlive their next maintenance filing, the dispute docket, and the conversion of each finding into exactly one deal mechanism. It covers the sell-side program that a founder should run six months before the bankers call, the closing deliverables list, and the post-closing recordation calendar with its three separate federal clocks. Every cross-referenced document is annotated with what it covers and when in the workstream to reach for it, and a branching reading path routes buy-side counsel, sell-side counsel, and lender's counsel to different sequences. A primary-authorities table and a forms shelf close it out.

IP and Technology > IP and IT in Corporate Transactions | Toolkit | Published 7 March 2026 - Updated 3 June 2026 | Casey Scott McKay - marksy.us

Summary. IP diligence is not document review. It is a reconstruction project: rebuilding, from public registers and a seller's imperfect files, an answer to four questions the seller usually cannot answer about itself. This toolkit maps that work across every asset class a deal touches — trademarks, copyrights, trade secrets, domains, data, and machine-generated material — and points you to the Marksy document that does each piece. It covers scoping and deal structure, building the asset schedule, verifying title link by link, searching for liens and contractual encumbrances, auditing whether the assets will survive their next filing, working the dispute docket, converting findings into reps, indemnities, and escrow, and recording everything inside three different federal clocks. It routes buy-side, sell-side, and lender's counsel down different reading paths, and it names the authority behind each step.

Keywords: ip due diligence · m&a intellectual property · chain of title · schedule of ip assets · encumbrance search · ucc-1 financing statement · security interest perfection · work made for hire audit · section 204(a) writing · assignment in gross · representations and warranties · special indemnity · escrow holdback · closing deliverables · post-closing recordation · open source audit · trade secret diligence · ip financing · change of control consent · sell-side ip readiness

Start Here

This toolkit is for the lawyer who has just been handed an IP workstream on a deal: buy-side counsel with a data room and five weeks, sell-side counsel trying to make a portfolio saleable before the bankers arrive, or lender's counsel deciding whether a brand and a codebase are worth lending against.

It answers three questions.

Where does the work live? IP diligence spans at least six asset classes with six different ownership regimes, three different federal recording offices, and three different priority clocks. The most expensive mistakes happen in the seams between them.

What does each finding cost, and who pays? Every defect resolves into exactly one of five outcomes — fix it, condition closing on it, indemnify it, reprice for it, or accept it — and the discipline of assigning exactly one is what separates a diligence memo from a list of worries.

What has to happen after the money moves? Closing is the middle of the job, not the end. An unrecorded assignment, an unreleased lien, and a correspondence address still pointing at a dissolved entity will each cost a client something real, and all three happen after the wire clears.

If you read only one thing, read Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide. It runs a single $18.4 million acquisition through eleven stages with real costs, timelines, and model deal language. The asset class is trademarks, but the architecture — scope, schedule, title, encumbrances, disputes, deal terms, closing, recordation — is the architecture of every IP workstream, whatever the asset.

Three invented matters run through this toolkit. Cormorant Analytical Group is buying Harrowgate Labs, Inc., a Durham software company, for $74 million in a stock purchase. Ridgeline Credit Partners is underwriting a $22 million revolver to Ninebark Provisions, a Boise outdoor-gear brand, secured in part by its marks. Copperline Coffee is a dormant $3.2 million brand being sold out of an assignment for the benefit of creditors.

The Field, Mapped

Start with the structural fact that decides the most: how the assets move.

In a stock purchase, nothing moves. The target keeps owning what it owned, and the question narrows to whether the target entity — not the founder, not a predecessor, not an affiliate — actually holds title, and whether any counterparty can terminate on a change of control. Cormorant is buying Harrowgate's stock, so every hour saved on conveyancing gets spent on the inbound license stack instead.

In a statutory merger, title passes by operation of law, but the registers do not update themselves and well-drafted anti-assignment clauses still trip.

In an asset purchase, nothing moves unless a signed instrument moves it — a complete schedule, a bilateral assignment for each asset class, foreign-form instruments where local law demands notarization or legalization, third-party consents, and a recordation program in three offices. This is the heaviest structure.

In a carve-out, only part of the goodwill moves, raising split-ownership problems, transitional licenses in both directions, and coexistence between buyer and seller.

In a secured financing, nothing moves at all — until it does, at foreclosure, which is exactly when a lender discovers that a lien on a brand without the business behind it may be a lien on something unsaleable.

Second, know the six asset classes and where each is governed.

| Asset | Ownership default | Where title is recorded | Perfection of a security interest | Priority window | |---|---|---|---|---| | Registered trademark | Owner of the goodwill; use-based | USPTO, 37 C.F.R. § 3.11 | UCC-1 in the debtor's state | 3 months, 15 U.S.C. § 1060(a)(4) | | Common-law mark | First user in a territory | Nowhere | UCC-1 | None | | Registered copyright | The author, unless work for hire | Copyright Office, 17 U.S.C. § 205 | Copyright Office recordation | 1 month domestic, 2 abroad, § 205(d) | | Unregistered copyright | The author | Nowhere | UCC-1 | None | | Patent | The inventor, until assigned | USPTO | UCC-1 | 3 months, 35 U.S.C. § 261 | | Trade secret | Whoever holds it and protects it | Nowhere, by definition | UCC-1 | None |

Read that table as a warning about seams. Ninebark alone required a Delaware UCC-1, a USPTO short-form security agreement, and a Copyright Office recordation, plus a covenant to report new copyright registrations quarterly — because a registration filed next year silently moves that asset from the UCC regime into the Copyright Act regime under In re Peregrine Entertainment, Ltd., 116 B.R. 194 (C.D. Cal. 1990), and In re World Auxiliary Power Co., 303 F.3d 1120 (9th Cir. 2002).

Third, the four questions. Everything in a diligence memo is an answer to one of them.

What does this business actually use? Not what is registered — what appears on packaging, in the app store listing, in the SKU master, on the wholesale line sheet, and in twelve months of invoices. Unregistered assets are usually a fifth of the portfolio and are always missing from the seller's schedule.
Does it own them? Capacity, authority, form, and — for trademarks — goodwill. For copyrights, a signed writing under 17 U.S.C. § 204(a) and a creator who was either an employee or inside one of the nine enumerated categories.
What has it already promised away? Outbound licenses, coexistence and settlement agreements, consents to register, distribution exclusives, non-challenge covenants, and liens.
Will it still be there in five years? Maintenance filings, actual use, quality control over licensees, and open termination windows under 17 U.S.C. §§ 203 and 304(c).

Fourth, the seam that costs the most money sits between IP counsel and corporate counsel. IP counsel searches the USPTO assignment database, finds no recorded security interest, and reports the marks unencumbered. Corporate counsel pulls the UCC search, sees "all general intangibles," and files it with the general lien clearance. Neither realizes that trademarks are general intangibles under U.C.C. § 9-102(a)(42) and that the marks are inside the lien. Assign one human to own that seam, in writing, in week one.

Finally, start early. Two findings can only be fixed by sequencing — an intent-to-use application that cannot lawfully be assigned before a statement of use, and an application filed in the wrong entity's name, void ab initio under 37 C.F.R. § 2.71(d) and Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007). Sequencing takes calendar time you will not have in week six.

1. Scoping and Structure

Write a scope memo before anyone bills an hour: deal structure, the share of purchase price attributable to IP, what the buyer intends to do with the assets, which jurisdictions matter, who owns what workstream, and a materiality threshold you will actually apply. The buyer's plans matter more than practitioners expect. A buyer who will keep selling the same product has an easy analysis; a buyer with a documented expansion plan needs to know about the settlement agreement that forecloses the category.

Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide opens with exactly this memo, including three scope tiers with market cost ranges and elapsed times you can hand to a client who asks what diligence costs. Reach for it in the first week, before the request list goes out. The one-screen-per-phase version, for the associate running the workstream day to day, is the Trademark Due Diligence Checklist: Chain of Title, Encumbrances, and Deal Risk, which states each item with the rule, fee, form, or office attached. Print the checklist; read the guide.

2. Building the Schedule

Build the asset schedule three times and reconcile: from the seller's docket, from the public registers, and from the business itself. The third source is the one that finds the assets nobody registered.

Adapt the Trademark Portfolio Inventory — Template as your starting grid, then add the diligence-specific columns the ordinary docketing report never carries: record owner exactly as it appears, the entity that actually uses the mark, recorded encumbrances, related agreements, pending proceedings, and a yes/no column for whether the buyer wants the asset at all. Roughly a fifth of an inherited portfolio is dead weight, and identifying it during diligence is what lets you price the maintenance covenant honestly instead of agreeing to keep 140 registrations alive forever.

For the portfolio structure underneath the schedule — house marks versus product marks, defensive filings, what a coherent portfolio looks like — see Building and Managing a Trademark Portfolio. Written for a growing brand rather than a deal, it is the right thing to hand a founder who asks why the buyer keeps calling their filings disorganized. The recurring version is the Annual Trademark Portfolio Review Checklist; a company that runs it every year hands a buyer a schedule instead of a shoebox.

Unregistered marks need scheduling too, and what they are worth depends entirely on where they were used — the subject of Where Your Trademark Rights End, which you should read the moment a target claims nationwide rights in something it never registered. The proof problem is operational: Establishing and Proving Common-Law Trademark Rights and the Common-Law Priority Evidence Checklist tell you what evidence of first use and market penetration survives a business-records objection. Collect it during diligence, while the seller's employees still work there.

Product appearance is a schedule item as well. If the packaging or product shape is doing brand work, Trade Dress and the Functionality Doctrine tells you whether the thing the buyer thinks it is buying is protectable at all — read it before a valuation model assigns a number to a bottle shape.

Software targets need a fifth sweep. The Legal Layers of a Website maps a digital product into five layers — code, interface, copy, data, brand — and is the fastest way to build a complete request list for a technology target. On Harrowgate it surfaced two unscheduled assets: the SPECTRALINE interface design and a 40,000-run calibration dataset that turned out to be the most valuable thing in the company.

3. Title, Asset Class by Asset Class

Trademarks

A trademark is not property that travels on its own. It is a symbol of goodwill, and 15 U.S.C. § 1060(a)(1) refuses to let the symbol move without the thing it symbolizes. Trademarks in the Deal: Chain of Title, Security Interests, and the Anti-Assignment-in-Gross Rule is the doctrinal spine of this whole toolkit: it works through PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969), Sugar Busters, L.L.C. v. Brennan, 177 F.3d 258 (5th Cir. 1999), and Marshak v. Green, 746 F.2d 927 (2d Cir. 1984), then explains the four ways chain of title actually breaks and why a defective assignment does not merely fail — it can restart the assignee's priority at zero. Read it before the first title chain, not after the first problem.

The distinction that decides how you read every instrument in the chain is set out plainly in Assignments vs. Licenses: What's the Difference?. It is short, and it is the right thing to send a client who has just described a permanent exclusive license as "basically a sale." The distinction has a tax edge too: a purported sale in which the transferor keeps significant power over the mark can be recharacterized as a license under 26 U.S.C. § 1253, while acquired marks otherwise amortize over fifteen years as § 197 intangibles.

Copyrights

Copyright vests in the author, and paying someone does not make you the author. Who Owns the Work: Employees, Contractors, Joint Authors, and Work Made for Hire explains the two exclusive routes to work-for-hire status, the agency test the Supreme Court adopted in Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989), and why most contractor deliverables — logos, websites, standalone software — fail the commissioned-work route entirely because they are not among the nine enumerated categories of 17 U.S.C. § 101. Read it the moment a target tells you its logo was "done by a freelancer, work for hire."

The execution manual is Transfers, Licenses, and Termination Rights: A Practitioner's Guide to Copyright Ownership Paperwork. Its Stage 12 is a chain-of-title cleanup protocol built for a deal clock: five defect types, the instrument that fixes each, and the fallback when the fix is unavailable. It also carries the confirmatory-assignment language you will send to a former contractor, and the warning that a new grant by the author starts a new § 203 clock. Use it the week diligence identifies a gap; confirmatory assignments take one to three weeks if the counterparty is reachable and indefinitely if not.

The working document is the Copyright Ownership and Chain-of-Title Checklist. Its most useful move is building the works register from accounts payable rather than from the contracts database — you find the creators the contracts database never knew about. Its back half calculates termination windows and drafts a notice satisfying 37 C.F.R. § 201.10 in all three of its independently fatal steps.

Two registration documents matter to a buyer for a reason that is easy to miss. What Copyright Registration Actually Buys You explains that an unregistered U.S. work cannot be sued on at all until the Office acts, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019), and that 17 U.S.C. § 412 cuts off statutory damages and fees for infringement beginning before registration. A target with no registrations is a target whose copyrights are close to unenforceable — and, separately, whose security interests cannot be perfected in the Copyright Office because there is nothing to record against. When the fix is "register before closing," the mechanics are in Registering a Copyright and the Copyright Registration Checklist: From Deposit to Certificate, including the group-registration options at 37 C.F.R. § 202.4 that make registering a software catalogue affordable.

Trade secrets and the people who carry them

Trade secrets have no register, so diligence is entirely about behavior. Trade Secrets and the DTSA: Protecting What You Cannot Register sets out the two statutory elements under 18 U.S.C. §§ 1836-1839 and what courts actually count as reasonable measures. Read it before you accept a target's assurance that its algorithm is "proprietary."

Building a Trade Secret Program That Survives Litigation is the sell-side answer: fifteen stages that produce the artifacts a buyer will ask for, including the 18 U.S.C. § 1833(b) whistleblower notice whose omission silently forfeits exemplary damages and fees in every agreement that lacks it. Buy-side, use the Trade Secret Protection and Departure Checklist as a diligence request list in reverse — ask for each artifact it produces, and treat the missing ones as findings. On Harrowgate, three of the four engineers who wrote the calibration engine had signed the company's 2019 form, which recited "agrees to assign." Two words, and title had never moved.

Machine-generated material

Every target since 2023 has AI-generated material in its deliverables, and most do not know where. Who Owns What the Machine Made: Copyright Authorship in the Age of Generative AI explains why the answer is so often "nobody," tracing the human-authorship requirement through Thaler v. Perlmutter, 130 F.4th 1039 (D.C. Cir. 2025), and the Copyright Office's guidance. The diligence consequence is concrete: an unowned marketing library cannot be conveyed, and a registration that failed to disclose AI contribution is exposed under 17 U.S.C. § 411(b).

Use the Generative AI IP Compliance Checklist as the request list and Deploying Generative AI Without Losing Your IP as the remediation plan, including supplementary registration under 17 U.S.C. § 408(d) to repair applications already filed without disclosure. Both are worth running sell-side, six months out.

4. Encumbrances

An encumbrance is not a defect in the asset. It is a permanent reduction in what the asset is, and that is why this phase reprices more deals than any other.

Liens. Search the UCC records in the office of the debtor's location — for a registered organization, its state of organization, U.C.C. §§ 9-301(1), 9-307(e) — and search every prior name and prior state, because a financing statement survives a name change for four months, § 9-507(c), and a relocation for one year, § 9-316(a)(2). Then read the collateral descriptions. Perfection of a trademark security interest is a UCC matter, In re Roman Cleanser Co., 43 B.R. 940 (Bankr. E.D. Mich. 1984), aff'd, 802 F.2d 207 (6th Cir. 1986), with the fuller reasoning in the patent context at In re Cybernetic Services, Inc., 252 F.3d 1039 (9th Cir. 2001) — which is precisely why the USPTO record under-reports liens and cannot be your only search.

Agreements. Outbound licenses bind the buyer. Inbound licenses are presumptively non-assignable without consent, In re XMH Corp., 647 F.3d 690, 695 (7th Cir. 2011), and U.C.C. § 9-408 does not make a lender's interest enforceable against the licensor. Coexistence agreements, settlement agreements, and consents to register are the quiet ones: they cost the current business nothing and cap the growth model permanently. The encumbrance table in the IP Buyer's Guide sorts each type by where it hides and what it does to the deal, and its Stage 5 carries a lien-clearance mechanic requiring both a UCC-3 filing authorization and a separately recordable USPTO release. Read the Trademark Coexistence Agreement — Template alongside it so you know what the restrictive clauses look like from the drafting side.

Bankruptcy. Do not assume a seller's bankruptcy will clear out existing licenses. Rejection of a trademark license under 11 U.S.C. § 365 is a breach, not a rescission, and the licensee may keep using the mark. Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019).

The trap. A buyer's counsel who reports "no recorded security interests at the USPTO" and stops. On Ninebark, a 2023 merchant-cash-advance financing statement in Idaho covering "all general intangibles" was a perfected first lien on the entire brand and appeared nowhere in the federal record. Ridgeline found it in week two. A buyer would have found it at closing.

5. The Survival Audit

Registrations die of neglect, and a buyer who does not audit for it pays full price for an asset with eighteen months to live.

Non-use. Use It or Lose It: Trademark Abandonment, Non-Use, and the Three-Year Presumption explains the statutory definition at 15 U.S.C. § 1127 and, more usefully for diligence, what token use will and will not survive. It also covers the Trademark Modernization Act's ex parte expungement and reexamination proceedings under 15 U.S.C. §§ 1066a-1066b, which are now a live threat to any registration covering goods the target never sold. When you need to build or break the record, the Trademark Abandonment Evidence Checklist is the evidence list, and Proving and Defeating Trademark Abandonment is the litigator's version. On Copperline, the dormant brand had been out of use for twenty-six months at signing — inside the presumption window, but only just, which is why the deal closed on a schedule set by the calendar rather than the diligence.

Uncontrolled licensing. A target that licenses its mark without controlling quality may have already forfeited it. Naked Licensing: How Sloppy Quality Control Kills a Trademark traces the doctrine through Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002), and FreecycleSunnyvale v. Freecycle Network, Inc., 626 F.3d 509 (9th Cir. 2010), and — critically for diligence — covers unwritten licenses and control by course of dealing, which is where the distributor who quietly became a licensee lives. Read the target's outbound licenses with it open.

When the finding is real, the remediation belongs in a covenant, and the clause library is in Drafting a Trademark License That Survives, whose Stage 15.2 is written for exactly this situation: the old license nobody ever controlled. The operational proof a buyer should demand — standards, sample logs, inspection records, a named human — is enumerated in the Trademark License Quality Control Checklist. Its Phase 7, on building a file that survives a Rule 30(b)(6) deposition, doubles as the buyer's document request.

Maintenance. Confirm every Section 8 and Section 9 date under 15 U.S.C. §§ 1058-1059 and price the ones falling within twelve months of closing, including who signs and who has authority to delete goods. Renewal Deadlines Explained and the Section 8 & 9 Renewal Checklist are the reference; Filing a Section 8 Declaration of Continued Use is the procedure when the buyer inherits a filing due in month four. Docketing Deadlines: Never Miss a Renewal is the post-closing discipline, and the reason it appears in a diligence toolkit is the single most common post-closing failure: counsel records the assignment, closes the file, and never updates the owner and correspondence address, so the Section 8 notice goes to a dissolved entity at an address nobody monitors.

6. The Dispute Docket

Search TTABVUE and PACER by party name, not just by mark, and search every prior name. Then read what the target has already agreed to.

TTAB Proceedings: Opposition vs. Cancellation orients you to what an inherited TTAB proceeding actually is and what relief is on the table, which matters because a buyer taking over a pending opposition is inheriting a litigation budget and a settlement posture. Federal Court vs. TTAB: Where to Bring Your Dispute is the framing for the strategic question that follows: whether the buyer wants the fight where the seller put it. Both are short and both are the right thing to read the day the TTABVUE search comes back with hits.

Do not skip the counterfeiting and gray-market exposure on consumer-brand targets. The Anticounterfeiting Program Checklist tells you what a functioning enforcement program looks like, which lets you price the absence of one; note especially that CBP recordations under 19 C.F.R. pt. 133 and marketplace brand-registry enrollments do not travel with an assignment and must be re-established post-closing. Gray Market Goods: The First Sale Doctrine, Material Differences, and Parallel Imports matters when the target sells through international distributors, because a channel the seller tolerated becomes the buyer's problem on day one.

7. Sell-Side: Six Months Before the Bankers Call

Everything above is cheaper to fix before a buyer finds it. A sell-side program has five moves: run the Copyright Ownership and Chain-of-Title Checklist and paper every gap with confirmatory assignments while the contractors still take your call; register the material copyrights so they are enforceable and pledgeable; run the Annual Trademark Portfolio Review Checklist and let the dead weight lapse deliberately rather than accidentally; move any founder-held registration into the operating entity with a proper assignment; and build the trade secret artifacts described in Building a Trade Secret Program That Survives Litigation.

What not to do. Do not contact a long-silent author to "clean up" a 1992 grant three years before her termination window opens under 17 U.S.C. § 304(c). You will have told her she has one. Diligence the windows internally, disclose them, price them, and leave the authors alone unless you intend to make a real offer.

8. Findings Into Deal Terms

Each finding gets exactly one mechanism: cure, condition, indemnity, price, or acceptance. Stage 8 of the IP Buyer's Guide carries an allocation table matching finding type to mechanism, annotated model IP representations with notes on where the negotiation actually happens, a special-indemnity clause carved out of the general cap, and an escrow table sizing each holdback to the finding that generated it. Three drafting points are worth pulling forward.

The sufficiency rep. "All intellectual property used in, held for use in, or necessary for the conduct of the Business as currently conducted and as currently proposed to be conducted." The bracketed clause is the rep's teeth and the first thing a seller strikes.

Termination disclosure. Buyers routinely omit a representation that no owned copyright is subject to a notice of termination and that the schedule identifies every grant whose window opens within ten years. The model language is in the copyright chain-of-title checklist. Its absence is how a buyer discovers in 2041 that the logo reverts.

Buyer control of defense. A seller controlling an inherited opposition will optimize for cost and may settle into a coexistence restriction that binds the buyer for a generation.

One structural note: representation and warranty insurance covers unknown breaches. Every issue in your memo is known by definition, and underwriters will exclude it by name. That is a reason to negotiate a specific indemnity for identified matters, not a reason to write a vaguer memo.

9. Closing and the Recordation Clock

Closing deliverables are a list, and the Trademark Assignment Agreement — Template is the short-form instrument at the center of it — the one that gets recorded, as distinct from the fully negotiated assignment with its reps and indemnities, which does not. Record the short form; keep the long form private.

Then run the calendar. Three federal clocks start at closing and none of them waits: three months for trademarks under 15 U.S.C. § 1060(a)(4), three months for patents under 35 U.S.C. § 261, and one month — two if executed abroad — for copyrights under 17 U.S.C. § 205(d). The step-by-step mechanics for the trademark side are in the Trademark Assignment Recordal Checklist, which is deliberately short and belongs on the wall of whoever is doing the filing.

Then the things that are not the assignment: UCC-3 terminations for every cleared lien; owner-of-record and correspondence-address updates on every registration under TMEP ch. 500; WIPO form MM5 for international registrations, with foreign counsel recording in national registries; substitution or joinder in any pending TTAB proceeding under TBMP § 512.01; CBP and marketplace re-enrollment; and domain and social-handle transfers, which no assignment reaches and which have to be moved account by account. The Madrid layer has its own traps — designations, dependency, and unresolved provisional refusals — covered in The Madrid Protocol: How International Registration Works and WIPO Office Actions and Provisional Refusals.

A Suggested Reading Path

Everyone, first: Trademarks in the Deal → Who Owns the Work → Assignments vs. Licenses. Two hours, and they cover the ownership rules for the two asset classes that generate most findings.

If you are buy-side on an operating company: the IP Buyer's Guide end to end, then the Trademark Due Diligence Checklist as your working document, then the Copyright Ownership and Chain-of-Title Checklist in parallel. Add Naked Licensing if the target licenses out, and Use It or Lose It if any registration covers goods you cannot find in the catalogue.

If the target is a software or SaaS business: The Legal Layers of a Website for the asset map, Transfers, Licenses, and Termination Rights Stages 3-4 for contractor and open-source gaps, Trade Secrets and the DTSA, and the Generative AI IP Compliance Checklist.

If you are lender's counsel: the security-interest sections of Trademarks in the Deal, then the maintenance material in Renewal Deadlines Explained and Filing a Section 8 Declaration of Continued Use — a lender's collateral can evaporate through borrower inattention alone, so maintenance covenants matter as much as payment covenants.

If you are sell-side: Section 7 above, then Building and Managing a Trademark Portfolio and the Annual Trademark Portfolio Review Checklist.

If the asset is a dormant brand out of distress: Use It or Lose It first, then the goodwill-survival discussion in Trademarks in the Deal. Goodwill can outlive a business, but not indefinitely.

Primary Authorities

| Authority | One-line holding or rule | |---|---| | 15 U.S.C. § 1060(a)(1) | A mark assigns only with the goodwill of the business; an intent-to-use application cannot be assigned before an amendment or statement of use except to a successor to the ongoing business | | 15 U.S.C. § 1060(a)(3)-(4) | Assignments must be written; unrecorded assignments are void against a subsequent purchaser for value without notice unless recorded within three months or before the later purchase | | 15 U.S.C. § 1055, § 1127 | Controlled related-company use inures to the owner; uncontrolled licensing is abandonment | | 15 U.S.C. §§ 1058-1059 | Section 8 declaration between the fifth and sixth years; combined Section 8 and 9 filing every ten | | 17 U.S.C. § 201(b), § 101 | Work made for hire requires an employee acting in the scope of employment, or a signed writing plus one of nine enumerated categories | | 17 U.S.C. § 204(a) | A transfer of copyright ownership is invalid without a writing signed by the owner | | 17 U.S.C. § 205(c)-(d) | Recordation gives constructive notice if the work is registered; a transfer recorded within one month domestically (two abroad) prevails over a conflicting later transfer | | 17 U.S.C. §§ 203, 304(c) | Authors and statutory successors may terminate grants notwithstanding any agreement to the contrary | | 17 U.S.C. § 411(a), § 412 | No suit on a U.S. work until the Office acts; no statutory damages or fees for infringement beginning pre-registration | | 18 U.S.C. §§ 1836-1839 | Federal civil cause of action for trade secret misappropriation; § 1833(b) notice is a condition of exemplary damages and fees | | 35 U.S.C. § 261 | Patent assignments void against a later bona fide purchaser unless recorded within three months or before the later purchase | | U.C.C. §§ 9-102(a)(42), 9-301, 9-307, 9-311 | IP is a general intangible; perfection is by UCC-1 in the debtor's state unless a federal statute preempts | | 11 U.S.C. § 365 | Rejection of a trademark license is a breach, not a rescission (Mission Product Holdings, 587 U.S. 370 (2019)) | | CCNV v. Reid, 490 U.S. 730 (1989) | Employee status under § 101 is determined by common-law agency factors | | Fourth Estate v. Wall-Street.com, 586 U.S. 296 (2019) | "Registration has been made" means the Office has acted, not that an application was filed | | Unicolors v. H&M, 595 U.S. 178 (2022) | A mistake of law in a registration application does not invalidate it under § 411(b) absent knowledge | | PepsiCo v. Grapette, 416 F.2d 285 (8th Cir. 1969) | Assignment of a mark for use on a substantially different product is in gross and void | | Sugar Busters v. Brennan, 177 F.3d 258 (5th Cir. 1999) | Validity of an assignment turns on whether the assignee's goods are substantially similar | | Marshak v. Green, 746 F.2d 927 (2d Cir. 1984) | A mark sold at a creditor's sale without the business conveys nothing | | Great Seats v. Great Seats, 84 U.S.P.Q.2d 1235 (T.T.A.B. 2007) | An application filed by the wrong entity is void ab initio; shared officers do not cure it | | Clorox v. Chemical Bank, 40 U.S.P.Q.2d 1098 (T.T.A.B. 1996) | Assigning an intent-to-use application to a lender voids the application | | In re Roman Cleanser, 802 F.2d 207 (6th Cir. 1986) | A trademark security interest is not an assignment; Article 9 governs perfection | | In re Cybernetic Services, 252 F.3d 1039 (9th Cir. 2001) | The Patent Act's recording provision reaches only ownership transfers; no Article 9 preemption | | In re Peregrine Ent., 116 B.R. 194 (C.D. Cal. 1990) | Security interests in registered copyrights are perfected in the Copyright Office | | In re World Auxiliary Power, 303 F.3d 1120 (9th Cir. 2002) | Unregistered copyrights are perfected under the UCC | | In re XMH Corp., 647 F.3d 690 (7th Cir. 2011) | Trademark licenses are presumptively non-assignable without the licensor's consent | | Barcamerica v. Tyfield, 289 F.3d 589 (9th Cir. 2002) | Reliance on a licensee's reputation, without more, is naked licensing | | Enzo APA v. Geapag, 134 F.3d 1090 (Fed. Cir. 1998) | A nunc pro tunc assignment does not confer retroactive standing | | Thaler v. Perlmutter, 130 F.4th 1039 (D.C. Cir. 2025) | "Author" in the Copyright Act means a human being |

Forms and Templates

Trademark Assignment Agreement — Template — the short-form conveyance that gets recorded. Use it as the recordable instrument alongside a negotiated long-form assignment; the goodwill language is the operative part.
Trademark Portfolio Inventory — Template — the grid the schedule of marks is built on. Add the diligence columns described in Section 2 before you send it to the seller.
Trademark License Agreement — Template — the reference form for reading a target's outbound licenses, and the starting point for the amendment that cures a naked-licensing finding.
Trademark Coexistence Agreement — Template — read it to know what the restrictive clauses in a target's settled TTAB matter look like from the inside.

Related Toolkits and Checklists

The Trademark Transactions Toolkit: Licensing, Assignment, and Coexistence is the sibling to this one: where this toolkit is about examining somebody else's paper, that one is about drafting your own. Go there when diligence turns into a transitional license or a post-closing coexistence arrangement between buyer and seller.

The Trademark Maintenance and Survival Toolkit maps the six ways a live registration dies and is the right companion to Section 5 — hand it to whoever inherits the docket on day one after closing.

The Trademark Portfolio Management Toolkit: Budgets, Audits, Docketing, and Reporting is the sell-side readiness program in toolkit form, and the integration plan for a buyer absorbing 140 new registrations into an existing docket.

The Copyright Fundamentals Toolkit: Ownership, Registration, Duration, and Scope is where to send a corporate associate who needs the copyright ownership rules from the ground up before reading a contractor file.

The Trade Secret Protection Toolkit: Programs, Departures, and DTSA Litigation covers the asset class that has no register and therefore no shortcut, including the departure protocol that matters when a target's key engineers leave after closing.

The AI, Content, and IP Toolkit and the Website and App Launch IP Toolkit: The Pre-Ship Legal Stack together cover the technology target — the ownership gap in generated material, and the five-layer asset map for a digital product.