A trademark is a unique symbol that identifies a product and can be sold or transferred through a trademark assignment. Registering the trademark provides official ownership records. Due diligence is required to avoid infringement cases, and a trademark assignment must be registered with the government. A trademark license is different from an assignment.
A trademark is a type of intangible intellectual property right that belongs to the holder of uniquely marked products when the trademark is used in commerce to identify the products. Trademark is the product name, logo, or any other symbol that distinguishes one product from another. A trademark assignment is an agreement that sells or otherwise permanently transfers all ownership rights in that trademark from one party to another.
Intellectual property rights, such as trademarks, are easily challenged unless the owner registers the trademark. While registration is not required for the owner to have rights to a trademark, it does present an official ownership record that can be referenced when the trademark owner goes to assign the trademark to another party. The party seeking to assign a trademark must ensure that they have an effective right to sell and that someone else has not used or registered a similar trademark at a previous point in time.
Similarly, the acquiring party in a trademark assignment should conduct multiple name and trademark searches to ensure that the trademark owner is the only party with rights to the trademark. Defending a trademark infringement case is expensive. The buyer who exercises due diligence to ensure that the trademark is owned by the bidder can be considered an innocent buyer, with the right to withdraw from the trademark assignment contract in the event of a subsequent dispute.
A trademark assignment can be thought of as a written contract between two parties, selling all rights to the trademark for consideration. The contract is then registered with the appropriate government authority, such as the US Patent and Trademark Office (USPTO). Alternatively, if the trademark is already registered with the USPTO, the parties can use the agency’s electronic assignment system to make the transfer. In any case, the assignment of the trademark must be registered with the government for the assignment to be valid and enforceable. The USPTO requires the assignment to be registered within three months of the transfer.
Finally, it is important not to confuse a trademark assignment with a trademark license. A license ultimately returns ownership of the trademark to the original owner after a set period of time. If a contract is entitled assignment of a trademark but contains reversible rights, it is a license, not an assignment. Pre-printed forms for labeling in the correct language can be found on the Internet or at a local office supply store.
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