A trademark assignment (which is different than a trademark license) is simply the transfer of ownership of a trademark from one person or entity to another. In order for a trademark assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public. Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.
Although a trademark assignment need not be in writing to be effective, it is strongly recommended that the assignment be in the form of a written document signed by both the assignor and the assignee. In the event the parties fail to memorialize the assignment in writing at the time of an oral assignment, they can later prepare what is called a nunc pro tunc assignment. This type of trademark assignment is similar to an ordinary assignment, but instead of it being effective on the date it is executed (which could be years after the trademark was orally assigned), it is considered effective from the date the oral assignment was made.
If the trademark being transferred is the subject of an existing federal trademark registration or pending trademark application, the trademark assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office. This can be done electronically using the Electronic Trademark Assignment System (ETAS). You must complete the online form, upload the trademark assignment, and pay the government filing fees (which are quite minimal). It is important to promptly record the trademark assignment so that the Trademark Office’s records remain accurate and so that the public is put on notice as to the rightful owner of the trademark. In addition, a trademark registration cannot be renewed in the name of the new owner unless the trademark assignment has been recorded with the Trademark Office.
Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign an intent-to-use trademark application until the trademark itself is in use in commerce, meaning that there is an existing and ongoing business related to the mark. If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to cancellation.
In conclusion, there are many pitfalls that must be avoided when assigning a trademark in order to ensure that the transfer of ownership is valid, legal, and binding. If you have any questions about trademark assignments, or maybe need some assistance with preparing and recording a trademark assignment of your own, please contact me for your free consultation. I look forward to hearing from you soon.