I created a graphic novel IP. I created a corporation to own the rights to it. But I would like to dissolved the corporation so I don't have to pay all these fees to keep it going. But I would like the IP rights and trademarks to be returned to me so I can do something with it in the future. How do I go about moving forward? The IP has been registered trademarked with the USPTO to the corporation.
Intellectual Property Law Attorney
Provided you use an attorney, this should be a simple matter of assignment back to you, provided you are the only shareholder, If you're a majority shareholder and not the only shareholder you need to see a business lawyer to do this properly so you don't end up later with a shareholder claim against you. The registered trademark can be assigned to you and the assignment recorded at the USPTO, which maintains an assignment database and updates their trademark database to show the last listed owner, which would then become you.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
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Intellectual Property Law Attorney
In general IP rights can be transferred or sold like any other property rights. However, there are some formalities that must be complied with to make sure it is a valid transfer. Since it is a graphic novel, I assume you are referring to Copyright in the novel and potentially a trademark. Did you actually file for and obtain a copyright registration? Was the work-a work for hire or was it assigned to the corporation?
You should speak with an attorney as these are all issues that need to be reviewed in order for the rights to be transferred properly. There is a chance they may not have been transferred properly in the first place.
Please note, no attorney-client relationship is created by this response. Any answer or other information posted above is general in nature and is not intended, nor should it be construed, as legal advice. with a review of the full facts of the matter and further discussion. This posting does not create an attorney-client relationship between you and the posting attorney, and you are urged to engage a qualified attorney who is licensed to practice in the relevant jurisdiction.
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Trademark Application Attorney
You will need to hire an experienced intellectual property attorney to draft an assignment document that transfers the IP from the corporation to you. If assignments are not drafted properly, intellectual property rights can be lost, so it is imperative that you work with an experienced intellectual property attorney to make sure that it is done correctly.
Once the assignment document is executed, then it will need to be filed with the United States Patent and Trademark Office. Again, an experienced intellectual property attorney can prepare the correct documents required by the United States Patent and Trademark Office and file the assignment to ensure that it is done properly.
There are many experienced IP attorneys on Avvo. Review bios and select one to assist you with this project to ensure that there are no problems down the line.
Best of luck!
This answer is for general information purposes only. This communication does not constitute legal advice, nor does it form an attorney-client relationship.
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Transfer of copyright (17 U.S.C. 201(d) - 17 U.S.C. 205) and trademarks (15 U.S.C. 1060) can be accomplished upon proper authorization of the corporation and compliance with the laws stated. You need to consult with an attorney to prepare the assignment documents and comply with the quoted statutes to assign all of the rights to that intellectual property.
With regard to the corporation, you can comply with the law of the jurisdiction where it was incorporated to "make it go away:" such as dissolution after paying all of its liabilities.
You stated that you "would like the IP rights and trademarks to be returned to me so I can do something with it in the future." This indicates that you may not be using the trademark. Trademarks can be abandoned by discontinuing the use of the mark "with the intent not to resume" its use. 11 U.S.C. 1127. Intent not to resume "may be inferred from circumstances," and "[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment." 17 U.S.C. 1127.
Consult with counsel who knows corporate as well as intellectual property law in Washington.
This post is for general informational purposes only. No attempt is made to provide legal advice.
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