A trademark assignment (which is different than a trademark license) is simply the transfer of ownership of a trademark from one person or entity to another. In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public. Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.
The Trademark Assignment Should Be in Writing
Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee. In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment. This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.
Recording a Trademark Assignment
If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO). This should be done electronically using the Electronic Trademark Assignment System (ETAS). You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal). It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark. In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.
Be Very Careful…
Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) (intent to use) until the trademark itself is in use in commerce, meaning that there’s an existing and ongoing business related to the mark. If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation.
Need Help Preparing or Recording a Trademark Assignment?
In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.
I’m experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059, via email at firstname.lastname@example.org, or through my contact form located below. I look forward to hearing from you soon.