A trademark is valuable property. As such, trademarks can be used in the same manner as other property. As examples, trademarks can be sold, can have more than one owner, be transferred, given as collateral for financing, be the subject of estate planning, and more. When a trademark is sold or transferred, the legal term is “assignment.” In general, to validly assign a trademark, three steps should be taken:
- Preparation and signing of a written Assignment of Trademark — both assignor and assignee should be signatories; this document can be seen as analogous to a Deed with respect to real estate transactions
- Recordation of the Assignment with the United States Trademark Office (with a copy of the Assignment attached) — similar to how a property Deed is recorded at the County Recorder’s Office after a real estate purchase
- Where the trademark is associated with certain products/services, the Assignment should explicitly transfer the goodwill associated with the trademark, the associated goods/services, and the assignor’s business
Note that a trademark assignment is a permanent transfer of trademark rights. If the transfer is intended to be for a set length of time, then the proper document is a trademark license. For example, a license structure is typical for franchise/franchisee relationships.
Partial assignments of trademark and extra legal steps
Often, trademark assignments are complete or whole. That is, all rights are transferred. Business mergers, acquisitions, and/or restructuring are common situations where assignments are complete.
Partial assignments are also common. With partial assignments, the owner/assignor transfers only part of the full “bundle” of rights and/or only defined aspects of the trademark to the assignee, such as the rights to the trademark for a subset of goods or services associated with the trademark. Note that, according to Trademark Office rules, trademark owners cannot use partial assignments to impose geographic restrictions. If a geographic restriction is desired, then the proper legal procedure is to obtain a concurrent use agreement through proceeding before the Trademark Trial and Appeal Board.
Partial assignments are subject to the same three requirements as set forth abov,e including the recordation requirement. However, when ownership of a trademark is divided in this manner, the best practice is to also file a separate Request To Divide with the Trademark Office. This request will create “parent” and “child” registrations, with ownership information being made available publicly. Current and correct ownership information is necessary so that the Trademark Office can properly administer trademark registrations.
Finally, the new part-owner of the trademark must understand its obligations with respect to the renewal and maintenance of the trademark. All owners must file the necessary renewal applications, pay the required fees, and file the required affidavits of continued use or excusable nonuse. If a part-owner fails to file the renewal documents, then the trademark will lapse as to those goods/services in the registration that were not properly renewed.
Contact The Trademark Attorneys At Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
