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Trademark Assignment

A Trademark Assignment is a transfer of an owner's rights, title, and interest in a trademark or service mark. The transferring party (“assignor”) transfers to the receiving party (“assignee”) its property rights in the mark.

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Overview of Trademark Assignment

A Trademark Assignment is a written document that acts as a legal road to transfer a recognized word, phrase, and symbol or design which originally originated by the current owner to another owner. The Current Owner is known as the "the Assignor", and the future owner is known as "the Assignee".

A trademark is a prized possession or valuable asset because it helps the customer to associate certain qualities with a recognized brand quickly. This agreement allows the owner to properly transfer the goodwill of the business to another party without jumping any hurdles.

“Trademark” is frequently brought into play when we refer to both a trademark and a service mark. The trademarks are used to identify products and goods while the Service marks identify the services provided.

Trademark Assignment

Basic Elements of Trademark Assignment Agreement

A simple Trademark Assignment Agreement will identify the following basic elements:

  • Effective date – when the trademark is officially transferred to the owner.
  • Trademark – describe the legally recognized word, phrase symbol or design that include the official trademark number if the mark has been registered with the U.S. Patent and Trademark Office.
  • Assignor- the current owner giving up ownership of the mark
  • Assignee- the future owner, giving money to obtain the mark
  • Consideration – money is paid for the mark
  • Warranties- the assignor guarantees that they are the true owner and have authority to transfer ownership and possess the authority to transfer the mark
  • Signatures- the assignor and the assignee must come to an agreement
  • Notary public- the agreement should be notarized if you expect to register the trademark in a foreign country.

Remember that registering a trade name is not the same as registering a trademark.

Kinds of Trademark Assignment Agreement

  • Assignment of Intellectual Property Rights Agreement
  • Assignment and Transfer Agreement
  • Intellectual Property Assignment
  • Transfer of Trademark Rights
  • Trademark Purchase and Trademark Assignment Agreement

What should be included in the Trademark Assignment Agreement?

The Trademark Assignment Agreement should cover the following details:

  • Who currently owns the trademark and who is going to be the new owner?
  • What the mark consists of and any associated trademark registration?
  • Where will any disputes be handled if in case any chaos arises?
  • Why the Assignor has the right to transfer the mark and associated goodwill?
  • When is the trademark transferred to the new owner officially?
  • How much will the assignee pay to the assignor?

Procedure to document the assignment of a trademark with the Registry

  • Assignment of the unregistered trademark- Section 39 stipulates that unregistered trademark could also be allotted or transmitted with or without the goodwill of the business involved.
  • Assignment of the registered trademark – the trademark can fully or partly allot or transmit with or without the goodwill of the business to another entity.

The fee for the trademark assignment differs according to the nature of the assignment.

What is the Need of Trademark Assignment Agreement in India?

It is a legal road that helps in transferring ownership or a trademark or service mark when needed. A transfer of ownership comes into the play when a product or company is being sold or purchased by another person or organization.

What are the Types of Trademark Assignment Agreement?

Federally Registered

Common-Law or Unregistered

Uses Registered trademark symbol (R) or ®

Uses the Trademark symbol ™ or (TM)

Formally registered with the USPTO

Uses the Servicemark symbol (SM)

Enhanced rights because the public is on Notice

Brand names and Logos are automatically protected when a company uses the mark in the normal course of commerce

USPTO is a federally registered mark that allows you to track the assignment on your trademark Query Site.

What are the consequences of not using the Trademark Agreement?

Without the Trademark Assignment, there will be a dusky vision on the record who currently owns the mark. Hence, the following are the consequences of not using the agreement

Assignors

Assignees

Loss of time
Time spent establishing that mark was not transferred

Loss of time
 The higher burden of proof that the trademark was transferred

Loss of Money
 Another business uses your mark without paying you

Loss of Money
Unable to capitalize on the value of goodwill

Loss of Image
 Business goodwill affected
 Customer Confusion Of Product

Loss of Image
 Unable to federally register
Receive a cease and desist letter

Forbes has valued Google’s trademark at a whopping $44.3 billion, while the Microsoft trademark came in right behind at a value of $42.8 billion.

How does Trademark Assignment work in India?

The transfer of a trademark takes place in various forms. The owner can transfer all its rights with respect to a mark to another entity in different ways.

Lets’ understand this with two case’s example

  • Example 1

The proprietor of a brand ABC Pvt Ltd sells his trademark completely through an agreement to XYZ Pvt Ltd. After this transfer, ABC Pvt Ltd doesn’t retain any rights with respect to the brand or trademark. This is a complete assignment of transfer of trademark.

  • Example 2

 Mr Santram, the proprietor of a brand used for pickles and sauces and spices product. He assigns the rights in the brand with respect to spicy products to Mangatram and retains the rights in the brand with respect to pickles and sauces.) This is called partial assignment of trademark.

The road doesn’t end here; there are types of Trademark Assignment which are as follows discussed-

  • Assignment with Goodwill: the rights and value of a trademark is associated with the product is also transferred to another company.
  • Assignment without the Goodwill- where the owner restricts few rights of the next owner. Therefore, in this case, the goodwill is attached to such brands with respect to the product.

Frequently Asked Questions

The trademark assignment is one of the most utilised and the most significant tool for the transfer of the IPR (Intellectual Property Rights) from one person to some other with or without goodwill. Assignee, the person who becomes capable and qualified by the assignment of a certified trademark must apply for the trademark assignment in the selected manner. It forms a legally binding obligation over the parties and helps the parties in case a conflict arises.

Transferring your trademark incorporates two significant steps: archiving the exchange between the gatherings and afterward reporting the exchange with the U.S. Patent and Trademark Office (USPTO). Before you can record your exchange with the USPTO, you'll have to assemble a trademark move (or task) understanding.

Commonly just the gathering allocating the licensed innovation must sign the task, and keeping in mind that authentication is unequivocally favored it isn't carefully required. Inability to record a licensed innovation move, or inability to cause a convenient recordation, to can affect a startup's privileges in a patent or patent application.

You can start by searching for federally registered trademarks. For this purpose you can use free trademark database on the USPTO's website. To begin with, go to the USPTO's Trademark Electronic Business Center at http://www.uspto.gov/main/trademarks.htm and choose "Search." Then follow the instructions you see on the screen.

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