What is the trademark assignment process?

What is the trademark assignment process?

When two parties execute an agreement for trademark assignment, the trademark is transferred to the other party.

WHAT IS A TRADEMARK?

Generally, trademarks are a form of intellectual property. They are also called trade-marks, marks, and logos. In order to distinguish products and services from those of others, trademarks consist of a recognizable sign, design, or expression. A trademark is typically identified by the symbols ® ‘the registered trademark symbol’ and TM ‘the trademark symbol’; the former may only be used by a registered trademark owner.

It is possible to own a trademark 

  •   an individual,
  •   business organization,
  •   or any legal entity 

The owner of a trademark has the exclusive right to use or license the trademark for use in exchange for valid consideration after the trademark is registered, thus saying that the trademark can be used exclusively by its owner or licensed for use for a fee.

TRADEMARK ASSIGNMENT

The transfer of ownership of a trademark, which is an intellectual property, takes place through assignment of trademark. A trademark is an asset that belongs to the company, so it can’t be transferred for free.

When a trademark or service mark is assigned, the party that transfers ownership is referred to as the ‘assignor’. The party that receives the trademark is referred to as the ‘assignee’.

A trademark assignment occurs when the assignee acquires the right to use the mark without having to transfer the better will of the business from the assignor.

TYPES OF TRADEMARK ASSIGNMENT

Trademarks can be assigned in four ways 

  •   Complete assignment

An assignment in which all rights are completely transferred from the owner to the assignee is called a complete assignment.

In addition to obtaining all the rights, the assignee can earn royalties and further transfer the assets.

  •   Partial assignment

Assigning trademarks to assignees is done with respect to a specific set of goods or services. Right transfers do not encompass all goods or services.

  •   Assignment with goodwill

The agreement also covers the transfer of goodwill of the product with the trademark, which is valued differently than in other types of assignments.

  •   Assignment without goodwill

When the trademark is assigned in this manner, the goodwill of the product is not transferred along with the trademark; in this case, the brand owner restricts the assignee’s rights and prevents him from using the trademark of the brand for any products used by the assignor. It is also known as a gross assignment when such an assignment is made.

WHEN CAN A TRADEMARK BE ASSIGNED?

The following situations can lead to the assignment of a trademark

  •   The Death of the Trademark Owner

Trademark ownership is transferred to the successors of the previous owner upon the death of the owner, whether in a will or in intestate succession. The Trademark must be valid and cannot have been abandoned by the previous owner. 

  •   Sale of Business

As with all properties, intellectual properties are assets for the company, even the trademark can be sold. As long as the trademark is registered under the company’s name, the intellectual property is also transferred if the party acquires a business in connection with the sale of the company’s assets. 

  •   Change of the owner of businesses

By signing a trademark assignment agreement between the two parties, all intellectual property of the acquired company is transferred to the new owner following the merger or amalgamation of the companies. 

  •   Change in Form of Business

Business owners who plan to change their business structure or form can benefit from an assignment.

CONCLUSION

In order to transfer intellectual property rights from one person to another, trademark assignment is the most commonly used and most important tool. It forms a legally binding obligation over the parties and helps the parties in case of a dispute. Businesses are able to transfer/sell their assets through this service.

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