Trademark Assignment

Trademark Assignment

Trademark rights can be bought and sold just like other forms of property.  When these rights are transferred, it is called a “trademark assignment.”  This practice is very common.  While not required, it is strongly recommended that these transactions be recorded on paper, with a contract.

The trademark assignment document must state that the assignment of rights includes the goodwill associated with the mark.  “Goodwill” in this case just means the public’s recognition of the mark.  Without expressly stating this, the mark may go abandoned.  That would make the purchase of any such mark worthless to its owner.

In the case that a trademark was assigned without a written agreement, there is a way to later document the assignment.  This is called nunc pro tunc trademark assignment.  It simply means that the assignment is made official from the date an oral agreement was made, instead of the date the written agreement was executed.

There is a process for recording trademark assignments with the U.S. Patent & Trademark Office.  However, this is limited to marks that are the subject of trademark registrations or pending applications.  The system for filing these is called the Electronic Trademark Assignment System, or ETAS.  Recording your assignment helps to put the public on notice as to ownership of trademark registrations.  Ownership will also need to be updated so that trademark renewals can be filed under the proper owner names.

Many individuals record trademark assignments to transfer registrations to their business entities.  They may not have incorporated their businesses before they filed their applications.  Then, because they have incorporated by the time the trademark registration issues, they can assign the registration to their business entity.  Having your business own the registration makes sense because (1) the registration is an asset of the business, not the individual; and (2) owning the registration as an individual means you may be liable in a trademark infringement lawsuit.  However, it is important to note that an application filed on an Intent to Use basis cannot be assigned during the application process without first having use in commerce.  Otherwise, the resulting registration can be subject to cancellation.

Do You Need to Record a Trademark Assignment to Transfer Ownership?

It is important that a trademark assignment ensures a transfer of rights without risking abandonment or cancellation.  If you would like to speak with an attorney that can ensure your assignment is properly recorded, please call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.