Today, I will be answering a common question that I received which is how to effect a trademark assignment. And before I get going on that, let’s talk about what a trademark assignment is. Sometimes, people get confused between a trademark license and a trademark assignment, whereas a trademark owner retains ownership and merely licenses use to another in a trademark license arrangement, a trademark assignment essentially transfers ownership from the original trademark owner to a second subsequent owner. However, in order to do that, there are certain requirements that must be met under trademark law.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall a Trademark Attorney with Traverse Legal, PLC, a law firm that represents trademark owners and trademark registration applicants throughout the United States.
Today, I will be answering a common question that I received which is how to effect a trademark assignment. And before I get going on that, let’s talk about what a trademark assignment is. Sometimes, people get confused between a trademark license and a trademark assignment, whereas a trademark owner retains ownership and merely licenses use to another in a trademark license arrangement, a trademark assignment essentially transfers ownership from the original trademark owner to a second subsequent owner. However, in order to do that, there are certain requirements that must be met under trademark law.
The first is that that trademark assignment must not only transfer rights in the trademark itself, but also in the goodwill associated with that particular mark. So, for example, you can’t merely assign a trademark without the underlying goodwill that’s associated with the business that provides a good or service under that particular trademark. That’s a critical step that most people need to recognize and understand. And the reason that trademark assignments are typically used is so that it can memorialize that not only is the trademark being assigned, but also the underlying goodwill of the business associated with that particular trademark.
So, once the two parties agree that they want to transfer ownership of a trademark from one to the other, they should consult with a trademark attorney who can help them put together a trademark assignment agreement. Sometimes, it’s known as a trademark purchase and assignment agreement, but regardless, it should contain language that identifies what the trademark is, the consideration or payment in return for the assignment of the trademark, and finally, it should make clear that it’s assigning not only the mark itself, but the goodwill of the business associated with that particular mark.
Now, there are obviously other provisions that are part of trademark assignment agreement, but the ones that I just mentioned are absolutely critical. The other thing to keep in mind when looking to assign a trademark is that in instances where you’re dealing with a registered trademark, such as a trademark registered with the United States Patent and Trademark Office, you need to also make a trademark assignment filing at the USPTO. And what that does is allow the USPTO to know that the original owner of the trademark has since assigned it to a second owner and they can update their records accordingly. Now, one practice tip that I would like to give to those listening to this show is that whatever you file with the United States Patent and Trademark Office becomes public record. So, if there is terms in your trademark purchase and assignment agreement that you wouldn’t want others to know about, you should have a separate trademark assignment agreement that can be filed with the USPTO to memorialize the actual assignment itself. That way, you can keep the specific terms such as the price or other conditions, be it a non-compete or other provisions, confidential while still accomplishing the goal and the requirement of filing actual paperwork to show that a trademark assignment has occurred.
So, to recap, the assignment of a trademark is something that happens fairly regularly, but it needs to happen by following certain steps. The most important being that it should be memorialized by a trademark assignment agreement and also, in the event that the trademark being assigned is registered with the UPSTO, there must be an assignment form filed so that the USPTO records can accurately reflect that, indeed, an assignment has occurred.
So, once again, this has been Brian Hall, answering your question: how to assign a trademark.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
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