When assigning US trademark applications and registrations you must take into consideration many potential issues that may arise. There are critical requirements for trademark assignment that must be met for an assignment to be legit. This article, hopefully, will give you insight and factual advice applicable to all trademarks. Also included are special requirements for assignment of US and other trademarks.
You must know that it is of the utmost importance that US trademark assignment filings meet these specifications. Anything else can open an assignment to legal challenge. This cannot stand and any third party can challenge the trademark in court and invalidate the registration.
“Goodwill” is the key to US Trademark law. Goodwill is defined as “The desirability of the goods or services which are identified by the trademark or service mark.”
A trademark is worthless without its goodwill representation. Section 10 of US Trademark Act (otherwise known as the Lanham Act) establishes that all trademark applications must include a written description of the trademark that establishes the goodwill intent of the trademark. Included with this requirement is a foreign registration under Section 44 of the Lanham Act.
It should be noted that to avoid discrepancies or any doubts, the word “Goodwill” must be included in all written trademark assignment of US trademarks.
Vital to this process is if the trademark owner has begun to use the trademark or not. If so, this person must file a “Statement of Use” with the US Patent and Trademark Office. You can use the “Amendment to Allege Use” form or a “Statement of Use” form. Once these have been filed, the rules of assignment are the same as those for use-based trademark applications and registration. See 15 U.S.C. 1060(a).
Now the rules are different if you have not begun to use the trademark. If this is the case, then US Trademark Law mandates the assignment be given to a successor to the applicant. This means a trademark follows a business if it is sold. This is called “Intent to Use” provision of 15 U.S.C. 1060 (a)(1).
When it comes to challenging the validity of a trademark assignment it is not contemplated by the USPTO. This is left to the courts and case law. Hence why it is so important to have your paperwork up to par.
If no transfer of trademark occurs with the sale of a business, this is called “Assignment in Gross” or sometimes, a “Naked Assignment”. This can lead to a new owner losing their rights to a trademark. In addition, a buyer’s business must be related substantially to the goodwill of the trademark’s intention. The whole idea is to prevent consumer confusion. See Sugar Busters LLC v. Brennon (5th Cir. 1999).
This “Assignment in Gross” can also occur when a seller abandons a trademark before the assignment takes place by lack of use either purposely or mistakenly. Most importantly, an assignment or trademark application can be voided if the trademark is sold without the business itself. A business and trademark are forever linked by law. If not, a third party may sue to obtain the trademark if a business is sold apart from the trademark.
It’s all about maintaining the integrity of what the trademark symbolizes. Imagine a Coke logo being used by Pepsi to promote its products.
This is why when we are asked: “Can I just buy a trademark?” we usually advise against it, as you can’t simply buy a trademark without an associated business. You can do this, but your trademark may be challenged and invalidated so we recommend filing your own trademark instead of trying to buy somebody else trademark, unless you buy the associated business and line of products as well.
Now, we’ll talk about the necessary ingredients for an assignment:
To record an assignment, we will need to prepare an assignment document that will have to be signed by the assignor. We will then file this assignment document with the Trademarks Office. It will take approximately 2-3 weeks for the Trademarks Office to record the assignment. In most countries (USA, Canada, UK, Germany) it takes only a few weeks for the assignment to be recorded.
In order to prepare an assignment document, we need to know the following information:
– name and address of the assignor (who transfers the mark)
– name and address of the assignee (to whom the mark is transferred)
– name and serial numbers of trademarks that are being assigned
– full name and title of the signatory for the assignor
The assignor will need to