by LawInc Staff
November 18, 2014
Intellectual property is an asset that trademark, copyright and patent owners can either license or assign and collect a fee.
Before learning how to assign a trademark, it is important to understand the difference between a license and an assignment.
A trademark license is an agreement between two parties, the trademark owner (licensor) and the person using the trademark (licensee), which allows the licensee to use the licensor’s trademark in commerce for a fee. A license grants the licensee permission to use the trademark in a restricted way such as a limited time, limited purpose or specific geographical location. The licensor retains all legal rights in the trademark.
An assignment on the other hand, is the official transfer of an owner’s property rights in the trademark to another individual or entity. An assignment provides the purchaser a record of ownership and transfer as well as the same protections offered to the original owner.
There are some requirements that must be met before assigning your rights in your trademark.
Prepare a Trademark Assignment Agreement
By law, a trademark owner may transfer or sell his or her property rights to another through a legal document referred to as an assignment. An assignment is generally a written agreement in which the two parties have negotiated and agreed to a price. To be valid, the assignment must be signed by both parties.
The parties should consult an attorney, specifically a trademark attorney, who can help draft an assignment that includes all the necessary information and language. The assignment agreement should include information about what the specific trademark is, how much is being paid for the trademark and that in addition to the trademark, the goodwill associated with the mark is being assigned as well.
Electronic File the Trademark Assignment With the USPTO
To be effective, the agreement must be filed and recorded with the U.S. Patent & Trademark Office (USPTO). Other documents that may affect the title of the trademark such as liens, licenses or name changes must also be recorded with the assignment.
Trademark assignments should also be filed electronically on the USPTO website. The Electronic Trademark Assignment System (ETAS) allows the parties to create and submit an Assignment Recordation Coversheet online by completing a form and attaching an image of the legal documentation (assignment agreement). There is also a nominal fee associated with filing the forms on the ETAS website. The trademark assignment agreement filed with the USPTO does not need to contain every detail of the original agreement. If confidentiality and privacy are important, a basic agreement may suffice.
Work With a Trademark Attorney
Choosing to assign a trademark can be simple. Remember, when drafting any agreement, it is very important to ensure you have crossed all your T’s and dotted all your I’s. So hire a trademark attorney who can make sure you comply with all the requirements.