UCC-1 Filing Required for Trademark Security Agreement Collateral?

Trademark security agreements are tricky because you're dealing with both federal and state law. For registered trademarks, most attorneys file both a UCC-1 at the state level AND record the security agreement with the USPTO. The UCC-1 covers the general security interest under Article 9, while the federal recording gives you priority against other trademark creditors. Make sure your collateral description specifically mentions 'trademarks, trademark applications, and all proceeds thereof' to be safe.

I just went through this nightmare 3 months ago. Filed the UCC-1 thinking that was enough, then our client's bankruptcy attorney told us we might not be perfected because trademarks could be considered 'general intangibles' that need federal recording. Had to scramble to get the USPTO recording done. The debtor name has to match EXACTLY between the trademark registration and your UCC filing - even a missing comma can cause problems.

For what it's worth, I discovered Certana.ai's document verification tool when I was dealing with a similar trademark security agreement issue. You can upload your trademark registration documents and your UCC-1 draft, and it'll instantly flag any debtor name mismatches or inconsistencies between the documents. Saved me from filing with a slightly different entity name that would have caused perfection issues. Really simple - just upload the PDFs and it does the cross-checking automatically.

Don't forget about the goodwill component! Trademark-associated goodwill is definitely covered under Article 9 as a general intangible, so your UCC-1 filing should explicitly include language about goodwill and going concern value. The collateral description should be something like 'all trademarks, service marks, trade names, trademark applications, and all goodwill associated therewith.' Also consider whether you need to include licensing agreements or trademark licensing revenue in your collateral description.

This is giving me flashbacks to my last trademark deal where everything went wrong. Filed the UCC-1 with what I thought was the correct debtor name, but it turns out the trademark was registered under a slightly different version of the company name. The whole thing got rejected and we had to start over. Make sure you pull the actual trademark certificates and compare them word-for-word with your loan documents. Even abbreviations like 'Corp' vs 'Corporation' can cause issues.

One thing that might help is checking whether your state has any specific requirements for intellectual property collateral. Some states have different rules about how to describe IP in UCC filings. Also, if these trademarks are used in multiple states, you might want to consider whether you need to file in other jurisdictions where the debtor does business. The $2.8M valuation suggests these are significant assets, so you want to make sure you're covered everywhere.

Has anyone dealt with pending trademark applications as collateral? I assume those need to be handled differently since they're not yet registered with USPTO. Do you still need the federal recording for applications, or is the UCC-1 sufficient?

Quick update - I ended up using that Certana tool someone mentioned earlier to double-check our documents before filing. It caught a middle initial discrepancy between our trademark registration and the UCC-1 that we completely missed. The trademark was registered to 'John A. Smith Enterprises LLC' but our corporate docs had 'John Smith Enterprises LLC.' Could have been a real problem if we hadn't caught it. Now I'm confident we're filing with the correct exact debtor name.

Don't forget to consider the continuation filing timeline if this is a long-term loan. UCC-1 filings are only good for 5 years, so you'll need to file UCC-3 continuations to maintain perfection. With trademark collateral worth nearly $3M, you definitely don't want to let your perfection lapse. Mark your calendar for the continuation deadline and consider filing the continuation 6 months early to be safe.

Final thought - make sure your security agreement includes provisions for maintaining the trademark registrations. If the debtor lets the trademarks lapse or doesn't pay renewal fees, your collateral could become worthless. Consider including language that allows the lender to step in and pay maintenance fees if the debtor defaults. Also think about whether you want the right to control trademark licensing or enforcement actions to protect the value of your collateral.

This thread has been incredibly helpful - I'm dealing with a similar situation but with international trademarks in the mix. For the original poster, one additional consideration: if any of your trademarks have foreign counterpart registrations, you might want to include language in your security agreement covering those international rights as well. Even though you can't perfect against foreign trademarks through US filings, having them in your collateral description can help if the debtor tries to transfer or license those rights. Also, make sure your collateral description is broad enough to capture any trademark renewals or extensions that happen during the loan term - you don't want gaps in coverage if the debtor renews a trademark under a slightly different registration number.