What is Trademark Assignment?
A Trademark Assignment allows a trademark owner to transfer the rights, title, and interest in a trademark. It is the assignment of a trademark to another party in writing under the supervision of an attorney. It includes transferring trademarks such as words, phrases, and logos from one entity to another.
A Trademark Assignment differs from a Trademark License Agreement, which grants permission to use a mark in some manner but does not transfer any rights in the trademark.
A Trademark Assignment helps ensure that the rights in a trademark are clearly identified and transferred and that both parties are clear on their rights and remedies.
What is the purpose of a trademark and trademark assignment?
The basic purpose of a trademark is to distinguish the goods and products provided by a business from another business. It is not mandatory to register a trademark; however, in some cases, it can add great value to a business. For example, the image and goodwill of any company can be reduced if any other company tries to copy or misrepresent their products as yours, in such case trademark can help distinguish your goods & Products from theirs and hence play an important role in the growth of your business. It also helps to create a brand value in front of your customers that helps them to distinguish your products and services by the use of trademarks whereas a trademark assignment helps in transferring the rights, title, and interest in a trademark.
Can a trademark be bought or sold?
Yes, a trademark can be bought or sold with the consent of the existing owner and interested parties, often referred to as a trademark assignment. Trademarks frequently get exchanged from one proprietor to another and the transfers can be both short term as well as indefinitely transferred. Generally, the owner of a trademark, who wants to sell it is known as the assignor and the interested party who is willing to buy the trademark is known as the assignee. The transfer process usually takes anywhere between 6 to 12 months and needs to be recorded with the trademark registrar.
Is a trademark the same as a service mark?
A trademark is basically done for distinguishing your goods and products from another business whereas a service mark is done for distinguishing your services from another service provider.
What is the difference between trademark and copyright?
Trademarks help to distinguish your goods and products from another business whereas copyright protects original work. Copyright includes protecting your original content like songs, movies, and books whereas trademarks are more focused on distinguishing your goods and products from another business by protecting brand names, logos, and slogans.
How is a trademark assigned temporarily and indefinitely?
A trademark assignment is used when the ownership and the trademark registration need to be transferred from one owner to another. This is an indefinite handover of ownership. It is a must to sign the Trademark Assignment Agreement before assigning trademarks.
On the other hand, a trademark license agreement is just a temporary transfer of a trademark, and ownership is still held by the original owner.
Types of Trademark Assignment
There are four types of Trademark Assignment:
Complete Transfer or Complete Trademark Assignment
Here, all rights associated with the trademark including, privileges to collect royalty, sell and transfer it, and others are completely handed over to another party. With this type of trademark agreement, the original owner will no longer hold any of the rights following the transfer of the trademark.
Limited Trademark Registration Transfer
This trademark assignment limits the use and ownership of the trademark to only some goods/services. Here, the rights to the trademark are transferred partially and is restricted to specific goods and services only. So, owners can keep some rights to themselves and transfer rights for only specific goods or services.
Trademark Assignment including Goodwill
When transferring trademark rights, this type of assignment allows the new owner to make use of the goodwill associated with the brand that has been supplied with the trademark. The new owner can utilize the trademark for new companies, or products that they create and sell.
Trademark Assignment without Goodwill
Also known as Gross Assignment, Trademark assignment without goodwill restricts the new proprietor’s ability to use Trademark Registration for new goods or services created by them in association with the trademark’s brand.
What should be included in the trademark assignment?
A trademark assignment should be drafted carefully, and it is important to mention the specific details of the trademark(s) to be transferred.
It should include:
- The name and contact details including the address of the new owner (assignee).
- In cases where the assignee is a company, details of the type of entity and state of incorporation should be included.
- Specific details of the trademark application(s) and/or registration(s) along with limitations of the transfer should be clarified.
- All information about the transfer including the goodwill associated with the marks should be clarified.
- If there are multiple marks involved, a single trademark assignment can include a schedule with the list of all the trademarks to be transferred.
- It is important to note and understand that the license to use a trademark is different from transferring ownership of the mark. In a trademark license, the licensor will still have ownership of the mark.
What are the benefits of Trademark Assignment?
Valuation of Trademark: A lot of effort is put into creating a brand and the process of assignment of a trademark slows the owners to cash in on the value created by the brand and get monetary returns for the same.
Trademark Assignment Agreement acts as legal proof: if a dispute ever arises with regards to the trademark, the Trademark assignment agreement can act as evidence of ownership and rights assigned.
Already established brand: someone who is using a trademark of another, they benefit by being able to enjoy the value that has already been created and is associated with the brand.
Conclusion: Trademark Assignment
So, trademark assignment or transfer of trademark registration is a process where the ownership, rights and registration of a trademark is given to another party. Although it is not mandatory to register a trademark for any business, having one does give you a stronger legal footing if any issues come up in the future. So, it is very important for any kind of business to register a trademark, which will help them to distinguish their goods and products from the others to take competitive advantage and grow their business to the next level.
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