Trademark Transfers

When you own a trademark, it is important to understand that is has value and should be viewed as an asset. In fact, it is possible to buy, sell, or transfer a trademark to a third party. However, there are specific rules and regulations you need to be aware of before moving forward with a trademark transfer. If you fail to adhere to these rules and regulations, it could cause irreparable harm to the value of your trademark.

If you are interested in transferring a trademark, the transfer needs to be completed in a “purposeful way” to ensure that the underlying meaning, or “goodwill,” is also transferred. This means you cannot simply license or authorize a company to use your trademark. There needs to be sufficient documentation showing a transfer of the aforementioned “goodwill.”

It is vitally important to complete a trademark transfer properly. Why? Because if a transfer is done improperly, it can create unnecessary delays, confusion, and even a potential break in title that could invalidate the earlier use of the mark and essentially destroy the trademark’s value.

When you decide to pursue a trademark assignment, it is important to understand that the assignment is not just a transfer of registration. When the transfer is completed, the new owner will have ownership of all rights and benefits associated with that particular mark. This is why a trademark owner needs to make clear that all the rights associated with the trademark will be vested with the new owner, including:

• Enforcement rights;
• Royalty rights; and
• Licensing rights

Hence, the importance of including “transfer of goodwill” in a trademark assignment. Here is an example of the type of legal language that should be included in the transfer agreement:

• All of the property, right, title and interest in the trademark, including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the trademark is used and which is symbolized by the mark transfer to the new owner;
• All income, royalties, and damages due or payable to the Assignor of the Trademark, including damages and payments for past or future infringements and misappropriations of the trademark are transferred to the new owner; and
• All rights to sue for past, present and future infringements or misappropriations of the trademark are transferred to the new owner.

Once the trademark transfer is complete, all legal responsibilities now fall upon the new owner, or owners. This includes taking steps to ensure there is no confusion with any other trademark, that trademark renewals are filed in a timely manner, and any alleged misuse of the trademark are monitored to ensure the quality assurance associated with the trademark.

As noted above, there are a myriad of issues to consider when deciding whether it makes sense to buy, sell, or transfer a trademark. The complexities associated with these transactions are why it is in your best interest to retain the services of a respected and experienced trademark lawyer such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.