With each trademark assignment, it must be expressly stated that all goodwill will also be transferred. Each transfer is unique and may result in differences in a final contract, but any valid assignment must include language indicating the transfer of customers. The agreement is also considered a “gross assignment” and could result in the loss of trademark rights. Remember that registering a trade name is not the same as registering a trademark. CONSIDERING that the assignor is the sole and legitimate owner of certain trademarks and/or service marks and the corresponding registrations and/or applications for registration (collectively referred to as the marks) listed in Annex A; and trademark owners generally strive to prevent external parties from using their intellectual property. However, by licensing the use to specific brands or individuals, they get a variety of benefits. These include gaining expertise, helping to shoulder the burden of a growing business, increasing brand awareness, creating a passive income stream, and expanding into new markets. Although a brand is considered one of the most valuable assets a business can own, there are various reasons why a brand transfer may be desired. These are just some of the reasons for trademark assignments: trademarks are valuable intellectual property, and this value comes from their inherent goodwill. The goodwill of the brand is the associations and positive feelings that the brand evokes in the consumer public. It is an intangible asset associated with the recognition of a brand by the consumer.

This written document may be filed with the USPTO, but unlike a traditional assignment, it is effective from the date of the oral assignment and not from the date of performance. Documenting orders afterwards is certainly not a good practice and can lead to many problems. However, this is the only way to fix an error that has occurred in the past. Assignments of both common law trademarks and trademarks registered with the USPTO must involve a transfer of branded goodwill. This is what makes a brand ID inherently valuable. The importance of this element of allocation concerns consumer confidence. The source of a product or service must correspond to what a consumer has led to believe. In addition to words, phrases, or logos, a trademark may also include a slogan, name, fragrance, the shape of a product or container, and a distinctive combination of musical notes. For example, even a color can be a trademark if it acts only as a symbol, according to the U.S. Supreme Court`s 1995 case of Qualitex Co.

v. Jacobson Products Co., Inc. These minimum requirements generally ensure that the transfer agreement is valid and valid in court. Responsibility for preparing a valid contract rests with the assignor and assignee. It is also recommended to add information on the payment of transfer fees and on the handling of disputes between the two parties. To ensure an appropriate transfer of ownership, a trademark transfer must be registered with the USPTO. This is done via the electronic brand assignment system. In addition to uploading your transfer agreement, you will need to complete an online form and pay the appropriate fees.

Otherwise, the assignees will harm future litigation and prevent them from renewing the trademark. The term “trademark” is often used to refer to both a trademark and a service mark. Trademarks identify products or products, while service marks identify the services provided. Remember that registering a trade name is not the same as registering a trademark. Learn more about whether you should register your trademark in the USPTO`s Trademark Basic Facts. If the trademark is federally registered, you can use the USPTO to track assignments on their Trademark Query website. Do your homework and check with the USPTO and in all 50 states whether the assignor actually owns the trademark or unregistered and has the right to sell the trademark. Due diligence can save you time and money later on. Not all assignments of trademark rights are immediately recorded in writing. This creates unnecessary risks for both parties. In these cases, a nunc pro tunc trademark transfer may retroactively document the transfer of ownership. Nunc pro tunc means in Latin “now for then”, so it serves as proof of when an oral agreement was concluded between the assignor and the assignee without being recorded in writing.

The moral here is to always be careful before adopting another party`s brand. The agreements used for licensing and trademarking have some similarities, but there are important differences. For example, license documents must include quality control provisions, the type of license granted, the effective date of the license, and any specifications for contract renewal. These conditions are generally not part of the orders. Use our trademark assignment agreement to transfer a trademark to a new owner. The transfer of ownership of a trademark is not necessary to grant certain rights. For example, the trademark license may give third parties permission to use a trademark without the original owner renouncing its rights. This is the type of business relationship that exists for more than 900,000 franchises across the country. A trademark assignment contract is often used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often necessary when a product or business is sold or bought by another person or organization. .