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assignment of trademark with goodwill

After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid , the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.

In contrast, if an assignment of a trademark is made without the mark’s accompanying goodwill, then it is considered an assignment “in gross” — and the assignment is invalid under U.S. law. Courts have analyzed whether an assignment was made in gross in a few different ways, but, as is the case with much of trademark law, protecting customers from deception and confusion is the primary motivation behind any analysis for determining the validity of an assignment.

One way courts determine if an assignment was made in gross is through the substantial similarity test. This test essentially examines whether the assignee is making a product or providing a service that is “substantially similar” to that of the assignor, such that consumers would not be deceived by the assignee’s use of the mark. This analysis includes an assessment of the quality and nature of the goods and services provided under the mark post-assignment.  Thus, even if an assignee is using the mark on the same type of goods, but the goods are of lower quality than the goods previously offered by the assignor under the mark, the assignment could be invalid. However, slight or inconsequential changes to goods and services after an assignment are not likely to invalidate the assignment, as such changes are to be expected and would not thwart consumer expectations.

Decisions on the question of substantial similarity are only marginally instructive, as the  test calls for a fact specific inquiry into what the consuming public has come to expect from the goods or services offered under a given mark. For example, courts have noted that despite similarities in services and goods, “even minor differences can be enough to threaten customer deception.” [1] Instances of products or services that were deemed not substantially similar (and thus resulted in invalid assignments) include: an assignee offering phosphate baking powder instead of alum baking powder; [2] an assignee using the mark on a pepper type beverage instead of a cola type beverage; [3] an assignee producing men’s boots as opposed to women’s boots; [4] an assignee using the mark on beer instead of whiskey; [5] and an assignee selling hi-fidelity consoles instead of audio reproduction equipment. [6]

Conversely, case law has also shown that substantial similarity can be found even when products or services do differ in some aspects, if consumers aren’t likely to be confused. For example, the following product changes did not result in a finding of an invalid assignment: an assignee offering dry cleaning detergent made with a different formula; [7] an assignee using thinner cigarette paper; [8] and an assignee selling a different breed of baby chicks. [9]

Whether goods or services are substantially similar may seem like an easy test to apply, but, as case law demonstrates, this fact-intensive analysis can yield results that look strange in the abstract. Disputes involving the validity of a trademark assignment are decided on a case-by-case basis, using the specific facts at hand to determine if consumer expectations are being met under the new use. Thus, while trademarks acquired through assignment can have significant value (and grant the assignee important rights formerly held by the assignor), assignees should be wary of changes to goods or services under an acquired mark that could be seen as deceiving the public.

[1] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[2] Independent Baking Powder Co. v. Boorman , 175 F. 448 (C.C.D.N.J.1910).

[3] Pepsico, Inc. v. Grapette Company , 416 F.2d 285 (8th Cir. 1969).

[4] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[5] Atlas Beverage Co. v. Minneapolis Brewing Co. , 113 F.2d 672 (8 Cir. 1940).

[6] H. H. Scott, Inc. v. Annapolis Electroacoustic Corp. , 195 F.Supp. 208 (D.Md.1961).

[7] Glamorene Products Corp. v. Procter & Gamble Co. , 538 F.2d 894 (C.C.P.A. 1976).

[8] Bambu Sales, Inc. v. Sultana Crackers, Inc. , 683 F. Supp. 899 (1988).

[9] Hy-Cross Hatchery, Inc v. Osborne 303 F.2d 947, 950 (C.C.P.A. 1962)

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Goodwill & Trademarks

assignment of trademark with goodwill

Firstly, a trademark represents the reputation of a company or brand, encompassing the quality and consistency of their products or services. When customers encounter a well-known trademark, they can expect a certain level of performance based on their prior experiences or the brand’s overall standing in the market. This association creates trust and loyalty between the consumer and the brand, fostering a positive relationship that benefits both parties.

Secondly, a trademark serves as a means for businesses to differentiate themselves from competitors. By having a distinct and recognizable trademark , companies can set themselves apart in an often-saturated market, which helps customers make informed choices. This unique identity also aids in marketing and promotional efforts, allowing businesses to effectively communicate their values and promises to consumers.

Moreover, the protection offered by trademark law is crucial in preserving the goodwill associated with a brand. By granting exclusive rights to use the trademark in connection with specific goods or services through federal trademark registration , businesses can safeguard their reputation and prevent others from exploiting their hard-earned standing in the market. In turn, this trademark protection promotes fair competition and discourages deceptive practices that could potentially harm consumers.

Lastly, trademarks can also serve as valuable assets for businesses. As a company’s goodwill and reputation grow over time, so does the value of their trademark. This increased worth can be leveraged in various ways, such as licensing agreements or even selling the trademark rights as part of a larger business transaction. This aspect further highlights the importance of trademarks as symbols of goodwill, which not only benefit consumers but also contribute to the success and growth of businesses in the long run.

A Trademark And The Goodwill It Symbolizes Are Inseparable

The concept that a trademark and the goodwill it symbolizes are inseparable emphasizes the intrinsic connection between a company’s unique identifier and the intangible value associated with its reputation, trustworthiness, and overall standing in the market. This strong relationship is vital in understanding how trademarks contribute to the success of a business and the loyalty of its customers.

First and foremost, a trademark serves as a visual representation of a company’s brand identity, effectively communicating its values, promises, and commitments to consumers. This recognition allows customers to associate the trademark with the goodwill the company has built over time, based on the quality of its products or services and its interactions with stakeholders. In this sense, the trademark becomes an embodiment of the company’s reputation, making it nearly impossible to separate the two.

Furthermore, the legal protection provided by trademark registration plays a significant role in maintaining the inseparability of trademarks and goodwill. By securing exclusive rights to use a particular trademark for specific goods or services, a company can prevent others from exploiting its reputation and diluting the goodwill associated with the brand. This protection not only safeguards the company’s interests but also ensures that customers can continue to trust and rely on the products or services they associate with the trademark.

Additionally, the goodwill symbolized by a trademark has a direct impact on consumer behavior and loyalty. When customers have positive experiences with a company or product, they are more likely to develop a connection with the trademark, which, in turn, fosters brand loyalty. This connection strengthens the bond between the trademark and its goodwill, as customers come to view the trademark as a guarantee of consistent quality and trustworthiness.

Goodwill As A Measure Of Buying Habits

A trademark, as a symbol of goodwill, can be seen as a measure of buying habits because it influences consumer decision-making processes when purchasing products or services. As an essential tool for brand identity and recognition, trademarks serve to convey the trustworthiness, reputation, and quality associated with a particular company or product. Consequently, these factors play a crucial role in shaping consumer preferences and purchasing behavior.

One way in which a trademark acts as a measure of buying habits is by instilling confidence in consumers. When faced with a well-known and respected trademark, customers are more likely to trust that the product or service they are purchasing will meet their expectations in terms of quality and performance. This trust is built on the goodwill associated with the trademark, which has been established through consistently positive experiences and the company’s commitment to excellence.

Furthermore, a trademark helps customers navigate the often-overwhelming array of choices available in the marketplace. By providing a distinct and recognizable symbol, trademarks enable consumers to quickly identify their preferred brand or product, which simplifies the decision-making process. This ease of identification is particularly important in highly competitive markets, where differentiation is key to attracting and retaining customers.

In addition, the presence of a strong trademark can also influence buying habits by creating a sense of loyalty among consumers. When a company consistently delivers high-quality products or services that align with its trademark’s associated goodwill, customers are more likely to develop a long-lasting connection with the brand. This loyalty can result in repeat purchases and positive word-of-mouth, further cementing the trademark’s role as a measure of buying habits.

Lastly, the goodwill associated with a trademark can have a direct impact on consumers’ willingness to pay a premium for certain products or services. As a symbol of quality and trust, a reputable trademark may lead customers to perceive a higher value in the associated offerings, making them more inclined to pay a higher price. This perception can also extend to the company’s other products or services, as the trademark’s goodwill effectively serves as a guarantee of consistent quality across the board.

Goodwill As The Value of A Business Beyond Its Tangible Assets

Goodwill is an intangible asset that represents the value of a business beyond its tangible assets, such as property, equipment, or inventory. It captures the essence of the business’s reputation, customer relationships, brand recognition, and other non-physical elements that contribute to its overall success and sustainability.

In essence, goodwill reflects the competitive advantage a company has built over time due to its favorable standing in the market, which cannot be solely attributed to its tangible assets. This advantage is often derived from the trust and loyalty customers place in the business, which is established through consistently delivering high-quality products or services and maintaining positive relationships with stakeholders.

Goodwill is also closely related to the concept of brand equity, which represents the added value a brand name brings to a product or service. A strong brand often results in higher sales, customer loyalty, and a willingness to pay a premium for the associated products or services. This added value, generated by the power of the brand, contributes to a company’s goodwill.

Moreover, goodwill can manifest in the form of skilled and experienced employees, who are crucial to the success of any business. The knowledge, expertise, and relationships these individuals bring to the company are intangible assets that enhance the overall value of the business, often attracting customers and partners who recognize and appreciate this valuable resource.

Another aspect of goodwill is the company’s intellectual property, such as patents, copyrights, and trade secrets, which can provide a competitive edge in the market. These intangible assets protect the company’s innovations and unique offerings, ensuring that the business can continue to benefit from its exclusive rights and maintain its goodwill.

When a business is bought or sold, the goodwill of the company is typically included in the transaction, often reflected as a premium paid above the value of its tangible assets. This additional amount represents the buyer’s recognition of the company’s reputation, brand strength, and overall intangible value, which is expected to translate into future earnings and success.

Valuation Of A Trademark And Its Goodwill

The value of a trademark is often tied to the goodwill it represents, which can be defined as the intangible value that a business derives from its reputation, customer relationships, and overall market presence. Determining the value of a trademark and the goodwill it symbolizes involves considering various factors, such as:

  • Brand recognition : A well-known and easily recognizable trademark often carries more value. The level of consumer awareness and the overall market presence of the brand contribute to its goodwill.
  • Reputation and customer loyalty : The brand’s reputation for quality, reliability, and customer satisfaction can impact its goodwill. A positive reputation typically leads to higher customer loyalty and repeat business, thereby increasing the value of the trademark.
  • Market share : The market share of the business, or its share of total sales within a specific market, can be an indicator of its goodwill. A higher market share often reflects greater brand value.
  • Marketing and advertising efforts : The amount of resources invested in promoting and maintaining the brand, such as advertising expenditures and public relations campaigns, can impact the brand’s goodwill.
  • Duration of use and legal protection : The length of time the trademark has been in use and the extent of legal protection it has can influence its value. Older and well-established trademarks with strong legal protection are generally more valuable.
  • Geographic reach : The geographic scope of the trademark’s use, registration, and protection can affect its goodwill. Brands with a broader global reach tend to have greater value.
  • Licensing agreements and partnerships : Licensing agreements, endorsements, and strategic partnerships can enhance the value of a trademark. These arrangements can expand the brand’s reach and strengthen its goodwill.
  • Industry trends and competitive landscape : The overall health of the industry and the level of competition faced by the brand can impact its goodwill. Brands in growing industries with less competition may have higher trademark values.
  • Financial performance : The financial performance of the business, including revenue, profitability, and growth trends, can be an indicator of the goodwill associated with the trademark.
  • Potential for future growth : The trademark’s potential for future growth, based on market opportunities and the brand’s strategic plans, can influence its goodwill.

It’s important to note that valuing a trademark and the goodwill it symbolizes is a complex process that often requires the expertise of professionals in the fields of finance, marketing, and intellectual property. They may use various valuation methods, such as the cost, market, or income approach, depending on the specific circumstances and the available data.

Methods of Valuation of Trademarks And Goodwill

The capitalization of profits method is a widely used approach to measure the value of a trademark. This method involves estimating the future economic benefits that the trademark is expected to generate and then discounting those benefits to their present value. In essence, it seeks to determine the trademark’s worth based on the income it is expected to produce over time.

To apply the capitalization of profits method, one first needs to determine the net income attributable to the trademark, which is the portion of the business’s profits that can be directly linked to the use of the trademark. This can be done by analyzing historical financial data and separating out the income generated by the trademark from other sources of revenue.

Next, an appropriate capitalization rate is chosen to discount the future income generated by the trademark. This rate takes into account the risk associated with the trademark’s future income stream, as well as the time value of money. A higher capitalization rate will result in a lower valuation, while a lower rate will yield a higher valuation.

Once the net income attributable to the trademark and the capitalization rate have been determined, the two are used to calculate the present value of the trademark’s future income. This present value represents the estimated worth of the trademark, reflecting the goodwill it symbolizes.

It’s important to note that the capitalization of profits method relies on various assumptions, such as the stability of future income and the appropriateness of the chosen capitalization rate. Therefore, it’s crucial to carefully consider these factors when applying this valuation method to ensure an accurate and reliable estimate of the trademark’s value.

The IRS generally follows a comprehensive approach to valuing trademarks and other intangible assets for tax purposes, which involves considering various factors and methodologies to determine a fair market value. When valuing trademarks as a unit, the IRS may use a combination of methods, such as the income approach, market approach, or cost approach, depending on the specific circumstances and the available data.

The income approach, which includes the capitalization of profits method or the discounted cash flow method, estimates the value of a trademark based on the future income it is expected to generate. The IRS would consider the net income attributable to the trademark and apply an appropriate discount rate to determine the present value of the future income stream.

The market approach, on the other hand, compares the trademark to similar assets in the market to estimate its value. The IRS may look at transactions involving comparable trademarks or consider royalty rates applied in comparable licensing agreements to determine an appropriate value for the trademark.

Lastly, the cost approach estimates the value of a trademark based on the costs that would be incurred to recreate or replace it. This method takes into account the expenses associated with developing, registering, and protecting the trademark, as well as the costs of creating a similar level of brand recognition and goodwill.

When valuing trademarks as a unit, the IRS may weigh the strengths and weaknesses of each approach and consider various factors, such as the trademark’s history, market presence, and potential for future growth. This comprehensive process ensures a more accurate and reliable estimate of the trademark’s fair market value for tax purposes.

Should I Hire A Trademark Attorney?

Our experienced trademark attorneys can provide valuable guidance and support throughout the trademark registration process, from conducting a comprehensive trademark search to determine the availability of the trademark , to preparing and filing the trademark application, to responding to any objections or challenges that may arise during the review process, and can represent you in any legal disputes or opposition proceedings.

Furthermore, our trademark attorneys can help you to navigate the complex and sometimes confusing legal requirements for trademark registration, and can help you to ensure that your application is complete and meets all of the necessary legal requirements. We can also help you to properly maintain your trademark registration, which is an ongoing process that requires ongoing monitoring and enforcement.

In short, engaging our trademark attorneys can help you to ensure that your trademark application is properly prepared, that it meets all of the legal requirements, and that you receive the full benefits of trademark protection. While it may cost more upfront to engage us, it can often save you time and money in the long run because we can help you avoid costly mistakes at every stage of the trademark registration process.

If you would like to contact us to discuss your trademark matter, give us a call or fill out our online contact form – it only takes a few seconds. Once you send your message, one of our attorneys will contact you within one business day.

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

  • All involved parties – the assignor and assignee – should be identified.
  • The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
  • Consideration must be listed (i.e. what each party is receiving).
  • List the effective date of the transfer.
  • Contract must be duly executed.
  • Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

  • Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
  • Sale of business : A trademark owner may decide to focus on a different business or retire.
  • Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

  • Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
  • Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
  • Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
  • Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
  • Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
  • Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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What is Goodwill and What Does It Have to Do With Trademarks?

April 16, 2021.

“Goodwill” (or “good will”, it’s written both ways) refers to a consumer’s positive opinion of a product or service and their willingness to purchase it again in the future or to refer it to a friend or colleague. If you like Starbucks coffee, the product can be said to have goodwill.

Goodwill and trademarks are inseparable. This is a legal fact: the Lanham Act, which is the Federal law that governs trademarks, states that a trademark can only be sold or transferred (“assigned”) “with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” Lanham Act § 10, 15 U.S. Code § 1060.

This means that you can’t just sell or buy a trademark the way you could sell or buy another type of business asset. In 1918, the Supreme Court defined an attempt to do as an “assignment in gross”. United Drug Co. Theodore Rectanus Co. , 248 U.S. 90 (1918).

Instead, a trademark can only be sold, bought, or otherwise transferred along with the underlying business itself. So Starbucks can’t just sell you its STARBUCKS trademark; you’d have to buy their coffee business, too.

This makes sense, if you think about it. As I’ve often discussed on this blog, the purpose of trademark law is to protect consumers. If you could simply sell a trademark without the underlying goodwill, then a consumer would never know whether to trust a brand name.

So beware anyone who tries to sell you a trademark without the business that’s attached to the brand. Unfortunately, it’s just not that simple.

Have questions about trademarks? Reach out to me .

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assignment of trademark with goodwill

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Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

By Eric Perrott, Esq.

assignment of trademark with goodwill

Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred. 

A trademark could be a word, a phrase, a symbol, or even a shape. However, one thing all different forms of trademarks share are that they represent a single source. They are essentially a shortcut for consumers to bring to mind a company’s quality, customer service, and even values, at a glance. A trademark only has value because of the impact it has on consumers and the exposure consumers have had to that brand. 

When transferring a trademark, simply allowing another company to use the trademark is not enough. You must transfer not only the right to the word or image, but also the underlying goodwill behind the trademark.

It is crucial that trademark owners properly transfer, or “assign” their trademarks to avoid delays, confusion, or worst of all, a break in title that could invalidate the earlier use of the trademark and ruin the value of the trademark. 

A Trademark Assignment Transfers Trademark Rights

A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a “transfer of goodwill” – this is written fully as a transfer of “(1) all the property, right, title and interest in and to 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 Trademark; (2) all income, royalties, and damages hereafter due or payable to Assignor with respect to the Trademark, including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark; and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademark.” 

By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights.  However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark. 

If the goodwill is not transferred, the new owner is essentially stating that they will not work to maintain the mark’s reputation among consumers. 

Common Issues with Preparing and Filing Assignments

When filing an assignment, either current or in the past, the assignment requires: 

  • the proper names of owners – if business entities, then complete names of active business entities
  • the date any transfer took place, whether in the past or on the date of signing 
  • the language above for all goodwill and interest and rights to sue for past infringement 
  • signatures of both the assignor and assignee – or qualified representatives of those entities

This may seem simple, but when completing a trademark assignment, it is important to understand why each of these items are needed in order to ensure that the transfer is done correctly. The mere fact that the USPTO accepts a recordation of an assignment does not mean it is valid.

 One common pitfall of attempting to file an assignment yourself is mixing up assignor or assignee, writing the wrong owner, or assigning the mark to an individual and not a business entity. Before assigning a trademark, ensure that you consider why the transfer is taking place. 

For example:

  • You may be transferring a trademark from one company you own to another as a restructuring of assets, such as a holding company or a change in tax status. 
  • You might have sold the business and all underlying trademark rights in the business name.
  • You may be transferring a mark according to a will or bankruptcy.
  • You may be transferring from your name, personally, to a newly created entity

All of these situations have their own nuances and it is easy to confuse who owns the rights with who is receiving them. No matter what, ensure that your assignment matches the owner on the trademark registration. Sometimes a trademark might change hands two or three times, with a few corporate name changes in the middle. You should be able to draw a straight line from the original owner to the new owner, and each step must be documented with the USPTO to ensure the recordation is valid. It might be a multi-step process involving multiple parties and, while complicated, it is essential that the ownership and chain-of-title are both correct.

Another common pitfall occurs when filing other documents, such as renewals. The filer is required to sign a sworn statement that the owner is correct. If the old owner files a renewal in the name of the old organization, the owner may have made a sworn statement that it was the owner of the mark, which could cause delays or even prejudice the registration in future proceedings.

Similarly, if the new owner files, they cannot simply change the name in the renewal. This will cause significant delays, as they will need to prepare an assignment and record it with the USPTO’s assignment branch before the renewal can be filed. If close to deadlines, this could get extremely complicated and cause additional fees or potential loss of rights.

Trademark assignments are an important part of the trademark lifecycle, as they allow trademark owners to buy and sell brands and further benefit from the goodwill represented by their brands. However, trademark owners should carefully consider the content of any assignment documents and ensure that they match the reality of the situation and the requirements of the USPTO.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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assignment of trademark with goodwill

Trademark assignment—How-to guide

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assignment of trademark with goodwill

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Updated on: February 15, 2024 · 10min read

1. Overview

  • 2. Do's & don’ts checklist

3. Trademark assignment instructions

A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including trademarks or software) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly drafted trademark assignment can help in both circumstances. 

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.

If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your trademarks. 

2. Do's & don’ts checklist

  • A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like “Coca-Cola” and images like Nike’s famous “swoosh.” A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.
  • An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). A transfer of partial rights is not a trademark assignment: do not revise the agreement to limit the reach of the rights being provided.
  • A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made.
  • The advantage of selling your trademark outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property: you will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a trademark, make sure that this is the best (and most lucrative) approach for you and your company.
  • Do not enter into an agreement without completing your due diligence. If you are purchasing a trademark, conduct searches with the USPTO, all 50 states, DBA filings, other government agencies, and online directories to make sure the seller actually has complete and unique rights in the offered property. Although your findings will not guarantee title, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the valuation and breadth of the mark. Consider hiring a professional to help in your investigation: comparing trademarks often requires a specialized understanding of what marks will be considered confusingly similar or deceptive. 
  • If you are selling a trademark, make sure you own it. Although this may seem obvious, ownership of intellectual property is rarely clear-cut. For example, you may have a name that you think of as your trademark, but unless you have used it in business, you do not have rights in that mark. Even if you have been using a mark in your business, another company may have started using it before you and have priority rights in that mark. A thorough search of the relevant marketplace and registry office should be conducted before you attempt to sell your trademark.
  • Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly in the document.
  • Sign two copies of the assignment, one for you and one for the other party.
  • It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
  • If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs. 

The following provision-by-provision instructions will help you understand the terms of your assignment. The numbers and letters below (e.g., Section 1, Section 2, etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process. 

  • Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest, and the Assignee is the party receiving it.
  • Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the trademark.
  • Section 1: Assignment of marks. The assignment and acceptance of the assignment of the trademarks and service marks. Note that the marks being assigned are not described in the agreement itself. The assignment references “Schedule 1,” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred.  Note too the emphasis placed on the goodwill being sold with the property. Goodwill can be defined as the intangible value of a piece of property (e.g., a brand’s reputation and recognizability). Remember that this is an essential element of a trademark transfer: assignments attempted without goodwill are considered invalid.
  • Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
  • 3(a): it is the owner
  • 3(b): it has not sold or transferred the marks to any third party.
  • 3(c): it has the authority to enter the agreement.
  • 3(d): it does not believe that the marks have been taken from any third party without authorization (e.g., a knowing copy of another company’s trademark).
  • 3(e): it does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
  • 3(f): the marks weren’t created while the creator was employed by a third party. In many cases, if an individual was employed by a company and came up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the marks being sold. If you and the other party want to include additional representations and warranties, you can do so here. 
  • 4(a): has the authority to enter the agreement.
  • 4(b) has enough funds to pay for the assignment. 
  • If you and the other party want to include additional representations and warranties, you can do so here. 
  • Section 5: No early assignment. Prevents the Assignee from re-transferring the marks, or using them as collateral for loans, until it has made complete payment of the money due under the agreement. 
  • Section 6: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
  • Section 7: No further use of marks. Indicates that after the effective date of the agreement, the Assignor will stop using all of the trademarks being transferred and will not challenge the Assignee’s use of those marks.
  • Section 8: Indemnification. A description of each party’s future obligations if the trademark is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
  • Section 9: Successors and assigns. States that the parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
  • Section 10: No implied waiver. Explains that even if one party allows the other to ignore or break an obligation under the agreement, it does not mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.
  • Section 11: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write a mailing address for both the Assignor and the Assignee.
  • Section 12: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
  • Section 13: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city—much less the same room—this provision ensures that business can be transacted efficiently without sacrificing the validity of the agreement as a whole.
  • Section 14: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
  • Section 15: Entire agreement. The parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
  • Section 16: Headings. Notes that the headings at the beginning of each section are meant to organize the document and should not be considered operational parts of the note.
  • Schedule 1: List of trademarks and/or service marks. In order for a trademark assignment to be effective, the marks being transferred must be clearly identified. Be thorough in your description and attach any registrations or samples that you may have. If you do include samples, reference the inclusion of those samples in the schedule (e.g., “See attached drawing.”).

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Transferring ownership/ Assignments FAQs

Assignment center coming .

On February 5, Assignment Center will replace the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for patents and trademarks . If you have questions, email [email protected] or call customer service at 800-972-6382.

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Transferring Ownership / Assignments

  • Transferring Ownership / Assignments, Procedures

You may contact the Assignment Recordation Branch customer Service Desk at 571-272-3350 from 8:30 a.m. – 5 pm ET. You may e-mail questions about electronic trademark assignment filing to [email protected] or for electronic patent assignment filing to [email protected] .

No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

No, these forms are not mandatory. However, the USPTO strongly encourages their use. Completing the forms in their entirety ensures that all the required information for recordation has been sent to the office. The forms are available in PDF-fillable format on the USPTO Forms page , thus making them quick and easy to prepare.

When these forms are received in the USPTO, they are scanned along with the supporting documentation. The bibliographic data from the cover sheet is then entered into the PTAS system and the documents are processed.

Payment may be made by use of a check, credit card, money order or USPTO deposit account if submitting documents in paper. Trademark assignments submitted electronically may be paid by credit card, USPTO deposit account or electronic fund transfer (EFT). The USPTO accepts VISA, MASTERCARD, AMERICAN EXPRESS and DISCOVER credit cards.

>> see How to Pay Fees for a current fee schedule and for more about fee payments

Essentially the rules:

(1) specify the minimum information about the transaction that must be submitted;

(2) require submitters to submit this information of a separate cover sheet; and

(3) specify that submissions must be legible and of such quality to permit processing; and

(4) pay the proper recording fee.

The rules permit submission of true copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

The Assignment Recordation Branch in the Public Records Division processes and records assignment documents for both patent and trademark properties.

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Background hero atmospheric image for Use Trademark’s Magic Words: Assignments Must Include ‘Goodwill;’ Licenses Must Include ‘Quality Control’

Use Trademark’s Magic Words: Assignments Must Include ‘Goodwill;’ Licenses Must Include ‘Quality Control’

The two most common transactions relating to trademarks each require specific words to be effective. Trademark assignments must include “goodwill;” trademark licenses must include “quality control.” To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark. Trademarks represent the goodwill of a business, which is different from the accounting principle of goodwill listed on a balance sheet. A trademark license must include a provision by which the licensor exerts some manner of quality control over the licensee’s use of the mark. The quality control provisions can be extensive or bare-bones but must always allow the licensor to have some inspection right over the goods or services offered. The licensor must also be certain, on regular occasions, to inspect the goods or services to be sure the licensee is meeting the quality standards. While it is clear that a licensor would want quality control, a licensee should understand the benefit as well. The licensee is using a brand and should want the brand to remain strong by being properly protected with necessary quality control provisions.

Ned T. Himmelrich 410-576-4171 • [email protected]

August 19, 2021

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Assignment of Trademark with Goodwill

Trademark with Goodwill

In the Trademark Act of 1999, Section 37 outlines what a Trademark Assignment means. It refers to the transfer of ownership of a trademark and a brand mark. This transfer can be either temporary or permanent. It’s a process where the current owner of the trademark hands over ownership, with or without goodwill i.e., assignment of trademark with goodwill or without goodwill to a new registered proprietor. In this blog, we shall specifically see what assignment of trademark with goodwill means.

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Understanding the Assignment of Trademark with Goodwill

When an Assignor transfers ownership of a trademark connected with goods or services currently in use by the assignor to the assignee, all associated value, rights, and entitlements are likewise transferred. This includes the assignment of a trademark with goodwill associated with the brand.

The Assignee, upon receiving the assignment of trademark with goodwill, gains the legal right to use the trademark for any products or services. This includes the ability to use the mark for goods or services that were previously provided by the assignor.

This transaction, in which the assignment of trademark with goodwill takes place, is commonly referred to as “ Trademark with Business Goodwill .”

Assignment of Trademark without Goodwill

When an Assignor opts to assign a trademark without goodwill, it signifies a transaction in which the Assignor imposes restrictions on the buyer’s rights while transferring the trademark.This type of transaction is commonly referred to as a “Gross Trademark ,” emphasizing the absence of goodwill transfer along with the trademark.

Advantages of Assignment of Trademark with Goodwill

There are various advantages that assignment of trademark with goodwill offers, as have been mentioned below:

1. Brand Monetization

One of the key advantages of assignment of trademark with goodwill is the opportunity to monetize your brand. By transferring the trademark to another party, you can realize financial gains and participate in the value generated from the brand you’ve invested time and effort in developing.

2. Easy Brand Development

Trademark assignments benefit not only the assignor but also the assignee. When a trademark with goodwill is transferred, the assignee inherits an established brand without the need to invest in the time and resources required for brand development. This can expedite their entry into the market.

3. Maintenance of Intellectual Property Rights

Trademark registrations require ongoing maintenance to remain current and enforceable. assignment of trademark with goodwill can aid in this process by ensuring that the rights associated with the trademark are preserved and upheld. This serves as a major benefit of assignment of trademark with goodwill.

4. Realizing the Trademark’s Financial Value

Creating a brand is a resource-intensive endeavour, involving significant financial investment, effort, and time. Through trademark assignment, the creator of the trademark can determine and realize the financial worth of their intellectual property, providing a return on their initial investment.

5. Reliable Legal Proof

In the event of disputes or disagreements related to the assignment of a trademark, the assignment agreement serves as legitimate proof. Such agreements effectively secure the legal rights of the registered trademark owner, offering a reliable means of resolving disputes and upholding the integrity of the trademark ownership transfer.

Required Documentation for Trademark Assignment

In the process of trademark assignment, several essential documents are necessary to ensure a legally sound transfer. These documents include:

1. Certificate of Trademark Registration

A certificate proving the registration of the trademark being assigned is a fundamental document to establish the legitimacy of the trademark and its ownership.

2. Details of the Assignor and Assignee

Comprehensive information about both the assignor (current trademark owner) and the assignee (the party receiving the trademark) is vital. This should include evidence of their identity and residence to verify their credentials.

3. Non-Objection Certificate (NOC)

A No-Objection Certificate , commonly referred to as an NOC, is required from the original registered trademark holder, indicating their consent to the assignment. This ensures that the transfer is carried out without any legal objections.

4. Description of Goodwill or Without Goodwill

The type of trademark assignment, whether with or without goodwill, should be explicitly described in the documentation to clarify the nature of the transfer.

5. Copy of Advertisement and Registrar’s Instructions

Including a copy of any advertisements or notices regarding the assignment, as well as any instructions from the registrar’s office, can be crucial for record-keeping and transparency.

6. Witnesses and Signatories

The involvement of witnesses and the signatures of both parties, i.e., the assignor and assignee , are integral to validate the agreement.

7. Notarization

Notarization of the documents ensures their authenticity and legal validity.

8. Proof of Time and Place of Execution

Documentation should include evidence of when and where the assignment agreement was executed. This information helps establish the timeline and location of the transaction.

9. Authority of Attorney

If an attorney is representing either party in the assignment, documentation verifying their authority to act on behalf of the assignor or assignee should be included.

By providing these documents, the trademark assignment process is made transparent, legally binding, and free from potential disputes or challenges.

Requirements for Trademark Assignment Registration

Before registering a trademark assignment, several prerequisites must be met to ensure its validity and legality. These prerequisites include:

1. Written Agreement: The assignment of a trademark must be formalized in a written agreement. This written document is a crucial requirement to establish the transfer.

2. Identifying Parties: The agreement should clearly identify the following parties:

  • Assignor: The current trademark owner or the legal owner of the trademark who is transferring the rights.
  • Assignee: The purchaser of the trademark or the new owner who is receiving the rights to the trademark.

3. Assignor’s Knowledge and Consent: The assignment must be carried out with the assignor’s full knowledge and explicit permission. It is essential that the assignor consents to the transfer.

4. Just Compensation: The assignment agreement should stipulate that the transfer is made in exchange for just compensation or consideration. This consideration may be financial, goods, services, or any other agreed-upon form of compensation.

Steps Involved in Trademark Assignment Agreements

The process of executing a trademark assignment involves several sequential steps, as outlined below:

1. Application Submission

The Assignee, Assignor, or both parties must initiate the trademark assignment by submitting an application. This application should adhere to the guidelines specified in Trademark Rules 2017 and be prepared using Form TH. It should contain all relevant information regarding the transfer.

2. Application Submission Deadline

The finished application needs to be sent to the trademark registrar within a certain timeframe. Usually, this should be done within three months of obtaining ownership or control of the trademark.

3. Registrar Approval

Approval from the Registrar of Trademarks is necessary in three months . In certain cases, such as Trademark Assignments with goodwill or without goodwill, the period may be extended.

4. Advertising Process

The Registrar will outline how to advertise the Trademark Assignment. It is the applicant’s duty to conduct the advertisement following the guidelines set by the registrar.

5. Official Ownership Transfer

After the Registrar reviews all the provided proof and is content with it, they will officially transfer ownership of the trademark from the current owner (Assignor) to the new owner (Assignee).

6. Register Entry

The Assignee, now the new owner, needs to have their name entered in the register as the rightful owner of the trademark. Consequently, they gain the right to use the trademark as per the terms in the assignment agreement.

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Final thoughts.

The assignment of trademark with goodwill is a strategic and mutually beneficial transaction for both assignors and assignees. It allows the assignor to monetize the value of their brand and the hard work invested in its development. Simultaneously, the assignee gains immediate access to an established brand, eliminating the need for extensive brand building efforts. This form of assignment maintains the intellectual property rights associated with the trademark, ensuring legal protection and credibility. Furthermore, it serves as a reliable proof of the transfer, offering security in case of disputes. In essence, assignment of trademark with goodwill is a vital mechanism that facilitates a seamless transition of brand ownership, ultimately driving the growth and prosperity of businesses while upholding the integrity of intellectual property rights.

Aishwarya Agrawal

Aishwarya Agrawal

Ms. Aishwarya Agrawal is a graduate from Hidayatuallah National Law University, Raipur [HNLU Raipur]. Aishwarya holds a great interest in adding value to the legal fin-tech sector. She joined "StartupFino" with a motive to help budding lawyers in their day-to-day journey in the field of Law.

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Assignment of Trademark

Updated on : Feb 22nd, 2022

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment  

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc. 

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand  ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business  

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor. 

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business  

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

  • The trademark assignment should be in writing.
  • The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
  • The assignor should have the intent and must consent for the trademark assignment.
  • The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

  • The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
  • The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
  • The agreement should show a clear purpose of the transaction/assignment.
  • The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
  • The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
  • The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
  • The signatures and witnesses must be mentioned.
  • The place and date of agreement execution must be mentioned.
  • The date and day of the assignment along with the parties to the assignment must be mentioned.
  • The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

  • The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
  • The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
  • Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
  • The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
  • The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
  • Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

  • Trademark assignment agreement.
  • Trademark certificate.
  • NOC from the assignor.
  • Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

  • The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
  • The assignee obtains the rights of an already established brand due to trademark assignment.
  • The trademark assignment supports the assignor and the assignee to expand their respective businesses.
  • The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.

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Assignment of Trademark

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Lasya Pamidi

Assignment of trademark is when there is a transfer of the owner’s right, title and interest of the trademark. Such transfers can take place in the form of an assignment or merger or also an amalgamation between two entities.

Trademark Assignment is the process of transferring ownership of the trademark either with or without the goodwill of the business. One can assign a trademark through a trademark assignment agreement. The original owner of the trademark is “the assignor” and the future owner is “the Assignee.”

Benefits of Trademark Assignment

  • Trademark’s value – Creating a brand name for a company involves money, time and capital. An assignor is able to encash the brand value. The Assignee is also able to unlock benefits of the brand name in the Industry.
  • Exercise Legal Rights – The trademark assignment agreement secures the legal right of the assignee incase of a dispute. The Registry ensures the validity of all the clauses mentioned in the agreement before publishing the assignment in the Trade Marks Journal.
  • Existing brand name – The assignee has the advantage of dealing in an already existing and established a brand name.
  • Business Expansion – The Brand value will propel with the combined efforts of assignor and assignee to contribute in brand building.

Types of Trademark Assignment or Transfer

  • The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc.
  • The owner transfers trademark restricted to specific products or services only.
  • Such assignment is when the rights and value of a trademark as associated with the product is also transferred to another entity.
  • Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use the brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer.

Documents Required

  • TM Certificate : Certificate of Trademark Registration (if any)
  • Details of the Party: Name and description of the assignor and assignee
  • NOC : No Objection Certificate from the original owner of the registered trademark

Process for Assignment of Trademark

  • The assignor or assignee or both can make a joint request to register assignee as a subsequent proprietor by an application of a trademark assignment. The application is made under Form TM-P.
  • Assignee must apply with the registrar of a trademark within six months from the date of procurement of the proprietorship. Some applications can filed after six months of procurement but the fee payable will vary. You can also find the amounts payable for the corresponding forms  here .
  • The Registrar will specify the advertisement of the trademark assignment. After which the applicant has to make the advertisement accordingly. A copy of the direction of the registrar and advertisement of the assignment must be submitted to the office to make sure that the directions have been followed.
  • On the receipt of the trademark assignment application and documents required, the registrar after perceiving satisfied shall register the assignee as the proprietor of the trademark. The registrar records the specifications of the assignment in the register.

Yes, you can assign an unregistered trademark by filing an application.

The Trademark Registry in India normally takes up to 6 to 8 months to update the data of the transfer.

A registry has prescribed Rs 9,000/- as a fee payable for application of transfer Trademark ownership i.e. Trademark Assignment in India.

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Hey @Dia_malhotra , Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce.

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Assignment and Transmission of Trademark

  • Intellectual Property Rights Subject-wise Law Notes
  • Aishwarya Agrawal
  • May 23, 2023

Trademark

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment. 

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

  • Restriction on assignment or transmission that would create multiple exclusive rights.
  • Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

  • Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
  • The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
  • If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
  • In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties. 

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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Assignment of Trademark Without Goodwill of Business

Assignment of Trademark Without Goodwill of Business

Want to know about trademark assignments? Well, check out this blog to know about trademark assignments, without goodwill. Also learn the procedure for the registration of assignment of the trademark.

The term ‘assignment of trademark’ refers to the transfer of a trademark. To put it simply, the word assignment implies the transfer of benefits, interests, rights, and titles from one individual to another. Therefore, trademark assignment is the transfer of the owner’s benefits, rights, title, and interest to another person. The party that is transferring the trademark is known as the ‘Assignor’ and the party to which the trademark is being transferred is known as the ‘Assignee’. 

According to the statutory definition u/s 2(1)(b) of the Trade Marks Act, 1999 the term ‘Assignment’ is a written assignment by the concerned parties.  Visit Vakilsearch to get assistance on the registration of trademark assignment without goodwill. You can also use the services of Vakilsearch for deed drafting and filing of your application. Furthermore, Vakilsearch provides necessary help and solutions in various legal matters.

Power of Trademark Assignment

 U/s 37 of the Trade Marks Act, 1999, the individual entered as the owner of the trademark in the trademarks register, alone holds the power for assigning the trademark and providing its effectual receipt.

Unregistered and Registered Trademark Assignability

U/s 38 of Trade Marks Act, 1999, it is possible to transfer any registered trademark with/without the business goodwill, either for all goods/services for which the trademark has been registered or for only some of the goods / services. Furthermore, according to section 39, it is possible to assign an unregistered trademark either with or without the business goodwill.  

Types of Assignment 

There are two types of assignment of trademarks:

  • Assignment of the trademark with business goodwill
  • Assignment of the trademark without business goodwill   

When there is an assignment of the trademark with goodwill, then the assignor provides the assignee with the rights, values, and entitlements also, as associated with the trademark for the services and/or goods that the assignor is already using. The assignee, post getting the goodwill attached with the trademark is allowed to make use of the trademark for all goods/services and also all those goods or services that the assignor was already using.  

In case of assignment without business goodwill, the assignor assigns the trademark to the assignee, with the entitlements and right only for the goods and/or services that the assignor is not using under that trademark. To put it simply, the assignee is restricted by the assignor such that the assignee cannot use the assigned trademark in relation to the goods and/or services that the assignor is using under that trademark. 

Let us look at an example.  A owns a trademark ‘T’ and is using it for handicraft items.  This trademark is assigned by A to B via a written agreement for the goods and/or services other than handicraft items.   So, A has assigned the trademark without the assignment of the associated goodwill that is attached to the trademark. Therefore, A has not assigned to B the goodwill attached to the trademark “T” so far as the handicrafts business is concerned. So, B cannot use the trademark ‘T’ for the purpose of handicrafts.  Furthermore, when B used the trademark ‘T’ for any goods and or / services, B will need to create its own goodwill for the trademark ‘T’ for those goods and/or services.

Procedure to Assigning Trademark without Goodwill

In the case of the trademark that is pending registration, the following needs to be done:

  • Filling out the required form –  TM-M 
  • Submitting the statutory Fees of ₹ 1,000/- in case of offline filing
  • Submitting the statutory fees of ₹ 900 in case of online filing

In the case of the registered trademark, the following needs to be done:

  • Filling out the required form – TM-P 
  • Submitting the statutory fees of ₹ 10,000/- in case of offline filing
  • Submitting the statutory feed of ₹ 9,000 in case of online filing

 According to section 42, rule 81, TM-P needs to be filed first with statutory fees of ₹ 3000/- for offline filing and ₹2,700/- for online filing, within a period of six months from making the assignment or within the three months extended period.  This is for the purpose of getting the direction from the registrar for ‘advertisement of assignment without goodwill’.  After this, the need is to file TM-M/TM-P, based on the requirement. 

Process of Assignment of Trademark Registration

1. U/s 45, the subsequent proprietor/assignee of a trademark who now has entitlement based on assignment, needs to apply with the Registrar of Trademarks for registration of assignment. 

2. Us 45, post the Registrar being completely satisfied, the assignee’s details will be entered by the Registrar as the trademark’s proprietor assigned to the assignee for the goods and/or services that the assignment allows. (buy ambien overseas)

3. U/s 45, when the parties are in dispute regarding the assignment’s validity, it is up to the Registrar may deny registration of the assignment till a competent court determines the rights that the parties hold. 

4. The application for assignment registration must be disposed of by the Registrar within a span of 3 months of the date on which the application was received. (Trade Marks Rules, 2017 – Rule 76) 

5. If reasonable doubt exists regarding the veracity of furnished document(s) or any statement, the Registrar may ask any individual who has filed an application for registration as a registered trademark’s proprietor to provide proof for the same or further proof of title. (Trade Marks Rules, 2017 – Rule 77) 

6. If the Registrar is of the opinion that any document furnished to prove a person’s title is improperly or insufficiently stamped, the Registrar may impound and handle the matter based on Chapter IV of the Indian Stamp Act, 1899. (Trade Marks Rules, 2017 – Rule 78) 

When the assignment registration is approved by the Registrar, then the following information will be recorded in the register: 

  • assignee’s name 
  • assignees address 
  • assignment date 
  • description of the assigned right in case the assignment is made in respect of any right 
  • basis of making the assignment 
  • date of the register entry 

(Trade Marks Rules, 2017 – Rule 84 )

We hope that this article has been helpful in providing information assignment of trademarks.  Under trademark assignment without goodwill, the assignor restricts the assignee from operating in the market where the assignor is already active. The assignee is permitted to use the same trademark but not for identical services/services as the assignor.

Visit Vakilsearch for details on trademark assignment and to receive professional help for filing for trademark registration with/without goodwill.

  • How Do You Assign a Trademark ?
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Elden Ring Trademark Is Now Fully Owned by FromSoftware

Ownership of the trademark switched from namco to fromsoftware almost a year ago..

Taylor Lyles Avatar

FromSoftware, the developer known for games such as Bloodborne and Dark Souls, now has full ownership of Elden Ring, the critically acclaimed action RPG it released nearly two years ago.

According to a U.S. Patent and Trademark Office trademark assignment document , Bandai Namco, which published Elden Ring, switched the ownership of the trademark for the game over to FromSoftware. The document notes that Bandai Namco signed the document in March 2023.

"NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, [Bandai Namco] hereby assigns to [FromSoftware] all right, title, and interest in and to the Trademark," the document reads. "[T]ogether with the goodwill of the business symbolized by the Trademark and the identified registration therefor, and with all claims arising out of or relating to the use of ownership of the Trademark.

Elden Ring was released in February 2022 and became a massive hit for FromSoftware, becoming a critical and commercial success, selling over 20 million copies in its first year . Following its release, FromSoftware announced nearly a year ago that it was working on Elden Ring's first DLC expansion, Shadow of the Erdtree , which has yet to receive a release date.

This news comes after a report published earlier this month claims that an Elden Ring mobile game developed by Tencent is currently in development .

In our 10 out of 10 review of Elden Ring , my colleague Mitchell Salztman wrote: "Elden Ring is a massive iteration on what FromSoftware began with the Souls series, bringing its relentlessly challenging combat to an incredible open world that gives us the freedom to choose our own path."

Taylor is a Reporter at IGN. You can follow her on Twitter @TayNixster.

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Elden Ring Trademark Is Now Fully Owned by FromSoftware

Ownership of the trademark switched from namco to fromsoftware almost a year ago..

Taylor Lyles

FromSoftware, the developer known for games such as Bloodborne and Dark Souls, now has full ownership of Elden Ring, the critically acclaimed action RPG it released nearly two years ago. 

According to a U.S. Patent and Trademark Office  trademark assignment document , Bandai Namco, which published Elden Ring, switched the ownership of the trademark for the game over to FromSoftware. The document notes that Bandai Namco signed the document in March 2023. 

"NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, [Bandai Namco] hereby assigns to [FromSoftware] all right, title, and interest in and to the Trademark," the document reads. "[T]ogether with the goodwill of the business symbolized by the Trademark and the identified registration therefor, and with all claims arising out of or relating to the use of ownership of the Trademark.

Elden Ring was released in February 2022 and became a massive hit for FromSoftware, becoming a critical and commercial success,  selling over 20 million copies in its first year . Following its release, FromSoftware announced nearly a year ago that it was working on Elden Ring's first DLC expansion,  Shadow of the Erdtree , which has yet to receive a release date. 

This news comes after a report published earlier this month claims that an Elden Ring mobile game developed by Tencent is currently in development . 

In  our 10 out of 10 review of Elden Ring , my colleague Mitchell Salztman wrote: "Elden Ring is a massive iteration on what FromSoftware began with the Souls series, bringing its relentlessly challenging combat to an incredible open world that gives us the freedom to choose our own path."

Taylor is a Reporter at IGN. You can follow her on Twitter @TayNixster.

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assignment of trademark with goodwill

IMAGES

  1. FREE 14+ Trademark Assignment Forms in PDF

    assignment of trademark with goodwill

  2. Trademark Assignment Agreement Template

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  3. Assignment of trademark

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  4. Benefits of Trademark Assignment

    assignment of trademark with goodwill

  5. FREE 14+ Trademark Assignment Forms in PDF

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  6. Trademarks and goodwill

    assignment of trademark with goodwill

VIDEO

  1. Goodwill District Meeting: The Assignment

  2. Sunday Morning Service

COMMENTS

  1. Trademark Assignments: Keeping it Valid

    Generally, for an assignment of a trademark to be valid, the assignment must also include the 'goodwill' associated with the mark (goodwill is an intangible asset that refers to the reputation ...

  2. Assignments, Licensing, and Valuation of Trademarks

    Some of the most common approaches to/methods of valuing a trademark are: (a) the income approach, which assigns a value to a trademark based on past and expected future profits of the goods/services associated with the trademark; (b) the market approach, which assigns a value based on comparisons of transactions (such as royalties, i.e., licens...

  3. Goodwill in Trademarks

    The concept that a trademark and the goodwill it symbolizes are inseparable emphasizes the intrinsic connection between a company's unique identifier and the intangible value associated with its reputation, trustworthiness, and overall standing in the market.

  4. Trademark Assignment with Goodwill: A Concept Whose Time Has Gone

    2005] TRADEMARK ASSIGNMENT "WITH GOODWILL ": A CONCEPT WHOSE TIME HAS GONE 773. of the products identified by a trademark.' As long as these changes do not come unexpectedly and do not harm or defraud consumers, there is no apparent reason why assignees should be prevented from carrying them out. ...

  5. Trademark Assignment

    Consideration must be listed (i.e. what each party is receiving). List the effective date of the transfer. Contract must be duly executed. Trademark goodwill must be specifically transfered. These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court.

  6. What is Goodwill and What Does It Have to Do With Trademarks?

    This is a legal fact: the Lanham Act, which is the Federal law that governs trademarks, states that a trademark can only be sold or transferred ("assigned") "with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark."

  7. Trademark assignments: Transferring ownership or changing your name

    Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change.

  8. Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

    There is a wording specific to trademark assignments known as a "transfer of goodwill" - this is written fully as a transfer of " (1) all the property, right, title and interest in and to the Trademark including all common law rights connected therein together with the registrations therefor for the United States and throughout the world togethe...

  9. Trademark assignment—How-to guide

    2. Dos & don'ts checklist A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like "Coca-Cola" and images like Nike's famous "swoosh." A trademark assignment is the transfer of ownership rights in a mark from one party to another.

  10. Transferring ownership/ Assignments FAQs

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.

  11. Trademark Assignment 'with Goodwill': A Concept whose time has gone

    Failures of the Rule of Trademark Assignment "with Goodwill"..... 829 B. Calling for a Consistent Rule on Trademark Assignment. 832 1. The Case for Trademark Assignment "Without Goodwill" ..... 833 2. Alternative-and More Effective-Tools to Protect

  12. Assignment of Trademark with Goodwill

    Trademark Assignment is a procedure in which the actual owner of the trademark transfers ownership of the trademark, with goodwill or without the goodwill, to the new proprietor who has been duly registered. Through Vakilsearch, get your trademark assigned online. Assignment of Trademark with Goodwill

  13. Avoiding Illegal Trademark Transfers: Introducing the Assignment-in

    In one well-read case, a court upheld the assignment of a trademark representing live baby chicks. 15 The purchaser of the mark in question was also a purveyor of live baby chicks and sought to use the goodwill of the acquired mark to sell a virtually identical product. 16 Because the assignee had a sufficient inventory and plant to capitalize ...

  14. Trademark Assignment "With Goodwill": A Concept Whose Time Has Gone

    Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce because it hinges on a concept that is ambiguous and ...

  15. Trademark Assignment 'With Goodwill': A Concept Whose Time Has Gone

    Abstract. Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce ...

  16. Use Trademark's Magic Words: Assignments Must Include 'Goodwill

    Trademark assignments must include "goodwill;" trademark licenses must include "quality control." To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark.

  17. PDF Assignment of Trademark

    Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill

  18. Assignment of Trademark with Goodwill

    1. Brand Monetization One of the key advantages of assignment of trademark with goodwill is the opportunity to monetize your brand. By transferring the trademark to another party, you can realize financial gains and participate in the value generated from the brand you've invested time and effort in developing. 2. Easy Brand Development

  19. Assignment of Trademark

    Section 2 (1) (b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business. Who can Assign a Trademark?

  20. Assignment of Trademark

    Assignment of trademark is when there is a transfer of the owner's right, title and interest of the trademark. Such transfers can take place in the form of an assignment or merger or also an amalgamation between two entities. Trademark Assignment is the process of transferring ownership of the trademark either with or without the goodwill of ...

  21. Trademark Assignment â•œWith Goodwillâ•š: A Concept Whose Time Has Gone

    2005] TRADEMARK ASSIGNMENT "WITH GOODWILL": A CONCEPT WHOSE TIME HAS GONE 775 10. See, e.g., Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1687 88 (1999). 11. See generally Kevin Parks, "Naked" Is Not A Four Letter Word: Debunking The Myth of the "Quality Control Requirement" in Trademark Licensing, 82 TRADEMARK REP. 531 (1992)

  22. Assignment and Transmission of Trademark

    1. Meaning of Assignment and Transmission of Trademark 2. Types of Assignment and Transmission of Trademark 2.1. Complete Assignment and Transmission 2.2. Partial Assignment 2.3. Assignment with Goodwill 2.4. Assignment without Goodwill 3. Conditions for assignment and transmission as given in section 42 4. Restrictions on Assignment of Trademarks

  23. Assignment of Trademark Without Goodwill of Business

    18 August 2023 1,106 4 mins read Want to know about trademark assignments? Well, check out this blog to know about trademark assignments, without goodwill. Also learn the procedure for the registration of assignment of the trademark. The term 'assignment of trademark' refers to the transfer of a trademark.

  24. Elden Ring Trademark Is Now Fully Owned by FromSoftware

    According to a U.S. Patent and Trademark Office trademark assignment ... and interest in and to the Trademark," the document reads. "[T]ogether with the goodwill of the business symbolized by the ...

  25. Elden Ring Trademark Is Now Fully Owned by FromSoftware

    According to a U.S. Patent and Trademark Office trademark assignment document, Bandai Namco, which published Elden Ring, switched the ownership of the trademark for the game over to FromSoftware. The document notes that Bandai Namco signed the document in March 2023.