How to Transfer a Trademark

A trademark transfer occurs when the rights to a trademark are sold or licensed from one owner to another. Such an agreement can be beneficial indeed to both the seller and buyer if structured properly. The trademark transfer can be organized so that the terms are governed on a temporary, contractual basis or permanently. A trademark transfer allows the transferor to further monetize his brand in ways that might not be readily available with current resources. Trademark transfers are complex in that they can encompass a variety of formulations including full and/or partial trademark assignments.

How to Transfer a Trademark: Step by Step

Trademark Transfers Come In Many Shapes and Sizes

Perhaps most importantly, it is critical to remember that there are two fundamental stages to any trademark transfer. The Transfer agreement between the different business entities and the recording of such a trademark transfer with the United States Patent and Trademark Office (USPTO). The former should thoroughly document all of the terms and conditions which will govern trademark transfer. Once the nature of the transfer has been properly memorialized between the parties, the trademark transfer must be documented and recorded with the USPTO. The government filing fee is associated with the transfer is presently $40. Failure to register the trademark transfer with the USPTO can result in trademark infringement and a variety of other legal woes. Please note, Trademark transfers for International Trademarks filed through WIPO and under the auspices of the Madrid Protocol need to be transferred in a separate office from the USPTO. Contact your Trademark Lawyer to learn more.

Trademark Transfers: Understanding the Trademark Assignment Vehicle

Trademark Assignments Are Powerful

A trademark assignment is a legal tool by which an owner of a trademark may “assign” his rights and interest in a trademark or service mark to another. The “Assignor”, or entity which transfers the mark to the new entity, or “assignee”, is accordingly compensated for the worth of the trademark. Critically, assignments are not mere licenses to use the given trademark – the trademark assignment quite literally transfers the right of ownership in the trademark. Right – this is a very serious matter.

Trademark Assignments – Nuanced Structure, Nuanced Result

There are few different types of trademark assignments, including a complete assignment, a partial assignment, an assignment with goodwill and an assignment without goodwill. A complete assignment is when all rights are transferred. Essentially, this leaves the former owner without any rights or royalties on the trademark. A partial assignment is when a trademark transfer is performed for a specific product or service. In this trademark assignment structure, you are able to retain rights and royalties to the majority of your business. An assignment with goodwill is a trademark transfer that allows a manufacturer to produce your product. An assignment without goodwill is when a specific product or service is sold to a third party to manufacture an unrelated product.

Trademark Transfers and Trademark Assignments – Weigh Your Options Carefully

Ask yourself, what’s the end goal of the Trademark Transfer and Assignment?

When considering a trademark transfer it is important to weigh the pros and cons of licensing structures vs. permanent TM sales. Do you simply want to grow your business by working with a manufacturer who can mass produce your product? Do you want to perform a trademark transfer in which a third party has control over a specific part of your business, or do you want to permanently transfer all rights and royalties of your trademark to a new owner? Hopefully, you’ll find what trademark transfer agreement is right for you.

Choose Carefull – Your Business Depends on it

Every client is different. Every Situation is Unique. Contact our trademark lawyers to discuss your particular trademark portfolio to learn more.