Trademark rights can be bought and sold just like other forms of property. When these rights are transferred, it is called a “trademark assignment.” This practice is very common. While not required, it is strongly recommended that these transactions be recorded on paper, with a contract.
What Must a Trademark Assignment Include?
There are several things that you want to have in a trademark assignment document. Most importantly, the document must state that the assignment of rights includes the goodwill associated with the mark. “Goodwill” here means the public’s recognition of the mark. Of course, the trademark itself is worthless without the underlying goodwill that it has accumulated through its use and consumer familiarity and exposure to it.
Also, you want to make sure to include any pending applications or registrations for the trademark on record with the U.S. Patent & Trademark Office (USPTO). Keep in mind that the rights from federal registration are not the same as underlying common law rights.
In the case that ownership of a trademark was previously transferred without a written agreement, there is a way to later document the assignment. This is called a nunc pro tunc trademark assignment. It simply means that the assignment is made official from the date an oral agreement was made, instead of the date the written agreement was executed. Obviously, to make a nunc pro tunc assignment, you must include the date on which assignment took place.
Recordation with the USPTO
If the assignment is for a trademark with a pending application or existing registration at the USPTO, you want to make sure the USPTO records are updated. To do so, you can file to record the trademark assignment using the Electronic Trademark Assignment System (ETAS). Of course, you would not file to record when there is no pending application or registration with the USPTO. Recording your assignment puts the public on notice regarding changes in the ownership of registrations. You will also need to record assignments so that trademark renewals can be filed under the proper owner names.
Many applications are filed under the names of individual owners. Later, the owner will create a business entity and assign the trademark rights to that business entity. Once that is completed, the owner can record the assignment with the USPTO. Having your business own the trademark registration makes sense because (1) the registration is an asset of the business, not the individual, and (2) owning the registration as an individual means you may have personal liability in a trademark infringement lawsuit. Although this practice is common, it is important to note that an application filed on an Intent to Use basis cannot be assigned during the application process without first having use in commerce. Otherwise, the resulting registration can be subject to cancellation.
Do You Need to Record a Trademark Assignment to Transfer Ownership?
It is important that a trademark assignment ensures a transfer of rights without risking cancellation. If you would like to speak with an attorney that can ensure your assignment is properly recorded, 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.
