Upon assigning their trademark rights, assignors may sell or license their trademark and transfer ownership of their trademarks and licenses using a Trademark Assignment Agreement or a Trademark Licensing Agreement, or they may choose buy or sell.
The purpose of this article is to give an understanding of trademark assignment and what its advantages, types, requirements, and procedures are in terms of trademark assignments.
Trademark assignment: a definition
Often, assignment on trademark is referred to as trademark transfer because it is the act of transferring the rights to a trademark under the Trademark Act, 1999. Trademark assignment is also known as trademark inheritance and is where ownership and rights of a trademark or brand mark are transferred.
When a trademark is assigned, ownership of the trademark transfers from one party to another, whereas it is assigned to another party.
For both parties, trademark assignments have a number of advantages, which include the following:
- By way of trademark assignment, trademark ownership can be turned into a monetary asset.
- A new owner may be assigned trademark rights after a brand has already been established in order to maintain ownership of that brand.
- Assigning trademarks can enrich the business of both assignees and assignors, since it provides them with the opportunity to expand their business operations.
- Assigning a right can establish legal rights in the case of a dispute between assignors and assignees, when it comes to assignors’ and assignees’ responsibilities.
Assignments of trademarks can be made in a variety of ways
It is important to understand that trademark assignment can take four different forms:
- Partially assigned,
- Submit the assignment,
- Goodwill assignment,
- Goodwill/ Gross assignment is one without Goodwill.
Assignment of trademarks: procedures and requirements
There are a few conditions that must be met before a trademark can be assigned:
- In order to assign a trademark, it must be in writing.
- Identifying two identifying parties is an essential part of the assignment:
- Trademark owners (assignors);
- Assignees of trademarks (buyers).
- The assignor should be sure to intend to assign the trademark to the new owner and to consent to the assignment before it can be made.
- The trademark assignment must be taken into account in a comprehensive manner.
- As part of the trademark assignment process, the following documents are required:
- Trademark assignment,
- The registration certificate of a trademark,
- The NOC of the assignor,
- Identified documents that have been assigned.
Refer to the following description for an explanation of the process of assigning a trademark:
- An application for the assignment can be filed by an assignor, assignee, or both if a joint request is made. Form TM-24 or Form TM-23 must be completed for a joint application.
- TM-P has been filed with the US Patent and Trademark Office.
- In order to be eligible for trademark registration, the assignment documents pertaining to the acquired trademark must be sent to the trademark registrar within six months of acquiring ownership of the trademark.
- A trademark registrar must advertise the assignment of a trademark in order to acquire the trademark.
- To ensure the accuracy of trademark assignment advertisements, the registrar requires them in its specifications.
- Applicants are responsible for making sure they submit copies of their application and the directions of the registrar to the registrar’s office along with their application.