Trademark Assignment Information
A trademark is a type of intellectual property that protects the names, terms or symbols used in order to identify the products of a certain company. One example is the Coca Cola name and image or Apple’s symbol.
What is a trademark assignment?
A trademark assignment is the transfer of an owner’s property rights, titles and interest in a given mark, term or symbol to another party. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all the parties involved. In order for a trademark assignment to be binding both the trademark and the “goodwill” must be conveyed. A transfer without goodwill is considered to be invalid. In addition, a transfer or assignment of partial rights is not a valid trademark assignment.
Unlike a licensing agreement, which grants another party permission to use the trademark in a restricted way, such as only on mugs or only for a specified time period, a trademark assignment transfers all rights, interests and goodwill.
What is goodwill?
In order to understand what goodwill is, we must first understand what a trademark’s purpose is. A trademark represents more than brand recognitions, it also represents the company’s quality, customer service, style, and the positive associations and feelings that the trademark creates and how it connects with its customers. It is an intangible asset. All of these elements put together are considered “goodwill.” A company builds goodwill overtime with its trademark by using it on its products, in advertising, social media and other marketing avenues.
A trademark’s value lies in the recognition that it has to customers. Therefore, when a trademark is assigned to a new company, the goodwill must be transferred with the trademark, or it will not be valid.
What happens once a trademark assignment agreement is signed?
After the parties have negotiated and signed a trademark assignment agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if registration is not made with the USPTO, as well as paying the associated fees.
It is a good idea to sign two copies of the assignment, one for you and one for the other party. It is also a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself
What is required in order to have a valid assignment agreement?
The USPTO will also not consider agreements to transfer trademarks valid unless they are written and the following qualifications must be met at minimum:
All involved parties must be identified by name and address, this includes both the assignor and the assignee.
The trademark that is being assigned must be properly identified, with all relevant ownership information such as registration number.
The trademark goodwill must be specifically transferred by explicitly stating so in the agreement.
There must be consideration. This means what is the party receiving for assigning the trademark, e.g., payments.
There must be an effective date as to when the transfer will occur, this is usually the same as the date of signing the agreement.
All involved parties must sign and execute the agreement.