A trademark is a type of non-physical intellectual property right that belongs to the owner of uniquely marked goods when the mark is used in commerce to identify the goods. The mark is the product name, logo or any other symbol that distinguishes one product from another. A trademark assignment is a contract that sells or otherwise permanently transfers all ownership rights in such a mark from one party to another.
Intangible property rights, such as trademarks, are easily disputed unless the owner registers the mark. Although registration is not necessary for the owner to have rights in a mark, it does present an official record of ownership that can be referenced when the trademark owner goes to assign the mark to another party. The party trying to assign a trademark must make sure he has an actual right to sell, and that someone else hasn’t used or registered a similar mark at some prior time.
Likewise, the purchasing party in a trademark assignment should conduct multiple name and mark searches to ensure the owner of the trademark is the only party with rights to the mark. Defending a trademark infringement case is expensive. A party who practices due diligence to make sure the mark is owned by the offering party can be considered an innocent purchaser, entitled to rescind the trademark assignment contract if a dispute arises later.
The trademark assignment can be designed as a written contract between two parties, selling all rights to the mark for valuable consideration. The contract is then registered with the proper government authority, such as the U.S. Patent and Trademark Office (USPTO). Alternatively, if the mark is already registered with the USPTO, the parties can use the agency’s electronic assignment system to conduct the transfer. In any case, a trademark assignment must be recorded with the government for the assignment to be valid and enforceable. The USPTO requires registration of the assignment within three months of a transfer.
Finally, it is important not to confuse a trademark assignment with a trademark license. A license ultimately reverts ownership of the mark back to the original owner after some designated period of time. If a contract is titled a trademark assignment but contains any reversible rights, it’s a license, not an assignment. Serviceable preprinted trademark assignment forms with the proper language can be found on the Internet or in a local office supply store.
