Can You Transfer a Trademark to Another Party?

According to the most recent data from the United States Patent and Trademark Office (USPTO), there are more than three million actively registered trademarks in the United States. If you hold a trademark, you may be wondering: Can I transfer my trademark to another party? The short answer is “yes”—but it is crucial that you do so in the proper manner. Here, our South Florida trademark lawyer explains the most important things to know about transferring trademark rights to another party.

A Trademark is Intellectual Property: It Can Be Transferred 

A trademark is a form of intellectual property. Similar to any other form of IP, the owner has the right to transfer their property interests to another party. If you want to transfer a trademark in Florida, you have two general options available for allowing another party to use your mark:

• License: Licensing a trademark allows the original owner (licensor) to grant permission to another party (licensee) to use the trademark. Technically, a license does not involve a transfer of ownership. Instead, it is akin to leasing your trademark rights.
• Sale: Selling a trademark, on the other hand, involves transferring the ownership of the trademark to another party. This is known as assignment. When a trademark is sold, the seller (assignor) transfers all rights of the trademark to the buyer (assignee), who then becomes the new owner.

Note: The sale (assignment) of a trademark should be recorded with the USPTO.

 Trademark Rights are Transferred Through an “Assignment” 

An assignment of a trademark is a formal transfer of ownership from one party to another. The law requires that such transfers be made in writing to avoid any ambiguity regarding the terms and extent of the transfer. A proper assignment will include not only the trademark itself but also the goodwill associated with it. Broadly defined, goodwill is a term that refers to the public perception and customer loyalty built under that trademark. Assignments can be complete, where all rights and interests in the trademark are transferred. Alternatively, they may be partial.

 Trademark Assignments Should be Drafted and Negotiated by a Lawyer

 Given the complexities and legal nuances involved with trademark transfers, it is imperative that the deal is handled by an experienced attorney. A poorly written contract can cause major problems for you and your business. A Florida IP rights lawyer can ensure that the assignment agreement comprehensively covers all legal bases, including:

• The scope of rights transferred;
• The compensation being received by the transferor; and
• Any warranties regarding the validity of the trademark;.

 Consult With Our Florida Trademark Attorney for Immediate Legal Guidance and Support

At Perkins Law, we are a law firm that is focused on helping you protect the value of your brand. If you have any questions about transferring a trademark to another party, please do not hesitate to contact us online to schedule your completely private consultation. With a law office in Boca Raton, we handle trademark transfer issues throughout all of South Florida.

Source:

uspto.gov/dashboard/trademarks/