An assignment of trademark rights must be signed and recorded with the USPTO if the owner of a federal trademark registration or application changes. The original trademark owner (“assignor”) transfers the ownership rights to the new owner (“assignee”) through an assignment of trademark in india. As long as the assignor signs the trademark assignment to transfer trademark rights, the new owner does not need to sign it. Online trademark assignment resources are available from the USPTO.
How do you transfer ownership of a trademark?
If you want to change the owner of a federal trademark registration or application, you’ll need to sign and record a trademark assignment with the USPTO. An assignment of a trademark entitles the original owner (“assignor”) to transfer ownership of it to the new owner (“assignee”). To transfer trademark rights, the assignor signs only the trademark assignment, so the new owner isn’t required to sign it. Online trademark assignment resources are available from the USPTO.
What should be included in the trademark assignment?
The trademark assignment should include the following details about the trademark(s) to be transferred:
- Ownership information (assignment address);
- Company type and state of incorporation if the assignee is a company;
- Please provide specific details regarding the transfer of trademark applications and/or registrations;
- Marks are transferred with goodwill associated with them.
The schedule of all trademarks to be transferred may be included in a single trademark assignment when more than one mark is involved.
Licensing a trademark does not mean that you are transferring ownership of it. The licensor always retains ownership of the mark.
ESSENTIALS OF ASSIGNING A TRADEMARK
Parties must fulfill a few basic requirements in order to complete the assignment of trademarks.
- It is important that the parties determine whether they want a goodwill or no-goodwill assignment.
- There must be a written agreement for trademark assignment;
- The assignor and assignee are properly identified;
- The mark(s) to be assigned, including their details and identification;
- Identify when the assignment became effective;
- Have all parties to the assignment sign it, which means that it must be duly executed,
- TM-P and trademark assignment agreement should be submitted to the registrar along with Form TM-P.
- A valid consideration should be offered for the transfer of the trademark;
ADVANTAGES OF TRADEMARK ASSIGNMENT
A good and properly drafted trademark assignment agreement for the parties is necessary for several reasons.
As a result of a trademark assignment, you will benefit from:
- With an existing trademark registered and well known in the market, the assignee has the advantage of accessing a new market with an existing customer base.
- In case of a dispute between the assignor and assignee, this document serves to prove there was an agreement to transfer the trademark between them.
- By assigning his trademark, the assignor can monetize it and reap the benefits of the investments he made to build his brand.
- Business expansion and brand maintenance are aided by it.
- Preserves the goodwill of the trademark and the brand of the owner.
As a tool for transferring intellectual property rights, trademark assignments are the most commonly used and most important. They form a legally binding obligation over the parties and help them in case of a dispute. Businesses can transfer or sell their assets using it.