Trademarks are a valuable means of demonstrating a company’s goodwill in associating a brand with a particular product for the benefit of consumers. As your startup or business matures (or acquires a business), you may need a trademark transfer agreement. It is a type of ownership transfer agreement that offers many business advantages necessary to protect acquired or transferred trademark rights.
What is Branding?
Trademark assignment is the formal process of transferring assignment of trademark ownership and related rights (such as use, license, assignment, etc.). Trademark assignments are often part of larger deals such as: B. Asset Purchase Agreement or Corporate Restructuring.
What if I need to complete a trademark assignment procedure?
Trademark assignment is always required if the trademark is permanently assigned. Such transfers can be within the larger corporate structure (from a parent company to a subsidiary), to family members (for example, through property management), or to an external party through a sale.
In situations where ownership of the trademark does not pass to the new owner, a trademark license agreement may be considered. Unlike a trademark assignment, a license does not transfer ownership, but usually grants rights related to ownership. For example, we typically see brand licensing in contexts such as franchise agreements, merchandising, and endorsement deals. Relevant to determining the process is the nature of the transaction and the relationship between the transferee and the transferee. Your checklist will also vary depending on whether you are a buyer or seller of a brand.
Due Diligence
Determine Eligibility to Transfer Trademark
Sign Trademark Transfer Agreement (This Must Be Included on Trademark Transfer Form)
United States Patent and Trademark Office (USPTO)
1. Due Diligence
All trademarks exist in common and statutory law at the state and federal levels Not created equal by rights. Therefore, it is important to research the trademark status before owning it. First and foremost, you should verify your registration number with the appropriate state and federal agency (such as the USPTO). Obtaining a registered trademark can increase your defense against trademark infringement and protect its value as part of your company’s goodwill after an acquisition.
2. Determining Authority to Assign Mark
Another important part of assigning a mark by assignment is to ensure that the assignor has the authority to transfer ownership to the assignee. A Florida trademark attorney can help verify this authority, but usually he does this in two ways. The first is the confirmation of ownership reflected in the trademark registration papers registered with the USPTO. However, these ownerships and permissions must also be confirmed in the business unit’s organizational document.
3. Enter into Trademark Assignment Agreement
Once proper due diligence has been completed, you will need to enter into a Trademark Assignment Agreement. The purpose of the contract is to provide evidence of the transfer and assignment of the rights and obligations between the assignor and assignee.
