A trademark license (which is different than a trademark assignment) is basically an agreement in which a trademark owner (the “licensor”) permits someone else (“the “licensee”) to use the licensor’s trademark in connection with specific products or services. Although a trademark license agreement isn’t generally required to be in writing to be legally enforceable, it’s strongly recommended that all trademark licensing agreements be in writing and signed by both the licensor and licensee.
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.
When prospective clients contact me about registering their trademarks, they often ask me whether they’re able to protect a trademark in the United States if they don’t get a US trademark registration. Oftentimes, these are new start-up businesses that want to protect a trademark but are on the fence as to whether they should spend the money on filing a trademark application if their trademarks already have a minimal amount of protection.
Trademarks are categorized by their distinctiveness or, in other words, their relative ability to distinguish your particular products and services from those offered by your competitors. The more distinctive your name is, the broader scope of trademark protection it receives and the easier it is for you to secure a US trademark registration issued by the United States Patent and Trademark Office (USPTO).
It has been my experience over the years that people are generally confused about the differences between trademarks, copyrights, and patents. Although all of them are extremely valuable forms of intellectual property, they are completely distinct from one another and serve very different purposes.
