Trademark assignment is the process by which one party transfers its trademark rights to another party. The assignment is a contract, which can cover a few different items. It may be an assignment of common law trademark rights. There may also be a federal trademark registration involved, as well. You can even assign a trademark application. This post is specifically focused on transferring federal trademark applications, and avoiding the biggest pitfall in doing so.
When Can You Assign a Trademark Application?
In most situations, it is possible to transfer a pending trademark application along with any common law rights. If you read my previous assignment post, you may remember that any assignment must cover the goodwill associated with the mark. It is also a very good idea for the assignment to be written, like other contracts.
The main point of this blog post is really more about situations where you cannot assign a trademark application. An application cannot be assigned if it was filed on an intent to use basis, and neither a Statement of Use or Amendment to Allege Use have been filed. If such an assignment is made, even if a registration is obtained it will be subject to cancellation. There is a very good reason why such assignments are prohibited.
Intent to Use Assignments
The filing of intent to use applications has had a big impact on trademark law in the United States. These filings have not always been allowed under the law. However, the Lanham Act was amended in the late 1980s to allow filings for trademark applications based on a bona fide intent to use a trademark in commerce. These applications mean that someone can acquire rights to a name on a date before they have even started using a trademark.
The prohibition on assigning intent to use applications is meant to prevent trademark prospecting. By that, I mean it keeps people from filing applications just to sell them to others. That would create a system where you have to pay someone else in order to acquire trademark rights. It would be exactly like the system in place for website domain names. People buy up web addresses they think someone may want someday. Then sell them for much more than they initially paid. This is why the Trademark Office requires proof of use of a trademark before a transfer can take place.
Want a Professional to Help Assign Your Trademark?
Whether you are on the buying or selling end of a trademark assignment, you want to make sure that things are done correctly. I would be happy to let you know if an assignment can take place, to draft the assignment, and record it with the Trademark Office. If you would like assistance from a trademark attorney, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
