Trademark assignments must be signed and recorded with the USPTO when ownership of a state trademark registration or application changes. The original trademark owner (“Assignor”) transfers ownership to a new owner (“Assignee”) through trademark assignment in India. The new owner does not need to sign as long as the assignor signs a trademark assignment to transfer the trademark rights. Online resources for trademark attribution are available from the USPTO.
How do I transfer ownership of a trademark?
A trademark assignment allows the original owner (“assigner”) to transfer its ownership to a new owner (“assignee”). When transferring trademark rights, the new owner does not need to sign, as the transferor simply signs the Trademark Assignment Form. Online resources for trademark attribution are available from the USPTO.
What should be included in a trademark assignment?
A trademark assignment must include the following information about the trademark being assigned.
If the transferee is a company, type of company and country of incorporation.
Please provide details of the transfer of trademark application and/or registration.
brands will be transferred along with related goodwill.
Where multiple trademarks are involved, a list of all the trademarks to be transferred may be included in a single trademark transfer. The licensing of any
trademark does not imply a transfer of ownership thereof. Licensor retains ownership of the brand at all times.
Trademark Assignment Essentials
The parties must meet a few basic requirements to complete a trademark assignment.
• It is important for both parties to decide whether they want a goodwill transfer or a non-goodwill transfer.
• Trademark assignment requires a written agreement.
• Transferors and assignees are properly identified.
• Marks awarded including details and identification.
• Specifies when the quota took effect.
• Have all parties to the assignment sign. In other words, it should be done properly.
• TM-Ps and Trademark Assignment Agreements must be submitted to the Registrar with Form TM-Ps.
• Fair compensation should be offered for the assignment of trademarks.
Benefits of Trademark Assignment
A good, well-drafted trademark assignment agreement is necessary for the parties for several reasons.
Trademark assignments result in the following benefits:
• Existing trademarks that are registered and well known in the market provide the transferee with the advantage of entering new markets with its existing customer base.
• In the event of a dispute between assignor and assignee, this document serves as evidence that an agreement existed between them to assign the trademark.
• Transferring a brand allows the transferor to monetize it and gain a return on the investment made to build the brand.
・Support business expansion and brand maintenance.
• Maintain the goodwill of the owner’s trademark and brand.
Trademark assignment is the most used and most important tool for transferring intellectual property rights. They form a legally binding obligation to the parties and help them in the event of a dispute. Companies can use it to transfer or sell assets.