The trademark assignment agreement must stipulate that the sale includes all goodwill associated with the trademark. This is governed by 15 U.S. Code 1060(a)(1), which states: „A registered trademark or trademark for which an application for registration has been filed is associated with the goodwill of the company in which the trademark is used or with the associated company`s customer base and symbolized by the use of the trademark, A trademark assignment contract is commonly used to facilitate the 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. Here are some of the most common situations where a trademark assignment agreement is important: Use our trademark assignment agreement to transfer a trademark to a new owner. If you don`t want to transfer full ownership of the trademark, consider a trademark license agreement instead. A license gives you temporary permission to use the trademark in a limited way. For example, a license allows you to use the trademark for a specific period of time or for a specific use or region of the country. If, for applicants intending to use, you transfer ownership of the goods or services to which your trademark relates to a successor of the business, you may file your assignment at any time.
In all other cases, you must wait until you have submitted an alleged usage change before submitting your task. See TMEP §501.01(a). If you do not register the transfer with the USPTO and the new trademark owner then infringes another party`s trademark, you may be involved in the dispute because you are still registered as the trademark owner. For this reason, you should consult an experienced intellectual property lawyer to ensure that the process is completed correctly. The assignee further agrees to cooperate with the assignee upon request and at the assignor`s expense: (a) to protect trademark rights and the prosecution and protection of foreign counterparties; (b) issue, verify, recognise and surrender all such other documents, including applications for registration and acts of transfer; and (c) take such other measures as the assignee may legally require in order to obtain or retain the marks and all applications and registrations for the marks. The transfer of goodwill does not necessarily entail the transfer of tangible assets. However, the mark must be used on goods or services similar to those already associated with the mark. Otherwise, it could be legally interpreted as an attempt to deceive the consumer by providing other and possibly inferior products. This requirement must be expressly set out in the trademark assignment agreement.
This assignment constitutes the exclusive agreement of the parties and supersedes all prior oral proceedings and writings relating to the subject matter hereof. Trademark owners may need to transfer ownership or change the name in their application or registration. This can happen during the examination of your trademark application or after the registration of your trademark. Here are examples of common reasons: Once this agreement has been signed by both parties, you can enter the transfer with the USPTO via a simple online form. You must also submit a copy of the signed transfer agreement. In the case of an online filing, the submission is usually processed within one business day. The registration fee for this service is $40. You can also submit by mail, which will take about a week. A trademark transfer occurs when the rights to a trademark are sold or licensed by one owner to another, which can be temporary or permanent.3 min read Goodwill refers to the reputation of the trademark directly associated with the branded goods or services. If you do not intend to use the trademark to promote these products or services, the trademark itself has no intrinsic value. For this reason, sales of a brand that do not involve customer transfer are not considered valid.
This prevents the person buying the brand from being misled about what they are actually buying. The assignor authorizes the United States Patent and Trademark Office and all other applicable jurisdictions outside the United States to register the transfer of the registrations and/or applications for registration listed in Appendix A to the assignee as the recipient of all rights, title and interest therein. When a trademark is transferred, this transaction must be documented by an agreement between the parties and by filing the appropriate forms with the United States Patent and Trademark Office (USPTO). The agreement in question is referred to as a trademark transfer agreement or trademark transfer agreement. Use the cover sheet of the registration form to transfer ownership or change the name using a paper submission. Send a letter to: To transfer ownership or update your information to reflect a legal name change: When ownership of a trademark is permanently transferred to another person or company, this is called an assignment. Types of trademark transfer include: A trademark can be partially transferred, that is, it is possible to assign the trademark for certain goods and/or services. In this hypothetical situation, it would be fundamental to draft a trademark transfer agreement with care and attention to detail.
A bad letter exposes the parties to a significant legal dispute. If the trademark owner and the original contractor use the trademark at the same time, the limits and conditions for the use of the trademark must be clearly defined. Use our trademark assignment agreement to transfer a trademark to a new owner. Here are some of the most common situations where a trademark transfer agreement is important: A trademark transfer agreement is a written document that conveys a word, phrase, symbol and/or design (the „Trademark“) recognized by the current owner (the „Agent“) to the future owner (the „Agent“). .