A trademark is a valuable business and personal asset. Like other assets, a trademark can be sold, transferred, licensed, used as collateral for money financing, etc. However, a trademark is an intangible asset, and as such, when trademarks are sold or transferred, the proper legal papers must be drafted and executed. It is NOT like going to a store, paying money, and taking possession of a physical object.
So, what are the proper legal papers? If you are selling or transferring a trademark, what is needed is an Assignment of Trademark. This is a written legal document that must be properly drafted and signed. An Assignment of Trademark is the legal document that transfers an owner’s entire right to a trademark to a new owner. This is similar to how a Deed will transfer a homeowner’s entire right to real property to a new owner. Note that an Assignment is very different from a license. A Trademark License Agreement allows another person or entity to USE the trademark. To continue the homeowner’s analogy, a License is like a homeowner renting the house allowing another to use the house.
A sale of a trademark might be just for the trademark or might be part of a larger sale of a business or a set of business assets. Thus, if trademarks are included in a business sale or sale of assets, special attention is needed to ensure the trademarks are properly transferred. If you need advice and legal counsel with respect to selling or transferring a trademark, call the trademark attorneys at Revision Legal at 231-714-0100 or 855-473-8474. We are lawyers with deep experience in all aspects of Trademark Law.
In addition to transferring ownership, an Assignment of Trademark also serves as a public record of the transfer and of the new ownership. This is because, generally, an Assignment must be filed with the U.S. Patent and Trademark Office (“USPTO). This is similar to how a Deed to a home must be registered and recorded with the County Recorder’s Office. If not properly drafted and signed, the USPTO can reject the Assignment and refuse to acknowledge that the trademark was sold or transferred. There are several things that must be contained in a valid Assignment, including:
- Proper and full identification of the trademark — including the trademark registration number
- Proper and full identification of the current owner of the trademark
- If the owner is a corporate entity, then a clause indicating that the corporate entity has authorized the sale or transfer
- Proper signatures, particularly if the seller/transferee is a corporate entity
- Inclusion in the Assignment of the “goodwill” associated with the trademark
- And more
What could happen if the Assignment is improper?
As noted, the USPTO could reject the Assignment. There is also several dangers including:
- An improper Assignment could invalidate the trademark entirely
- USPTO registration could be canceled or challenged by a competitor
- An improper Assignment could prevent the new owner from asserting trademark priority rights and protections dating back to the original owner’s first use of the trademark
- And more
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.