WHAT IS AN ASSIGNMENT OF TRADEMARK?

What is an Assignment of Trademark?

An Assignment of Trademark is usually a written contract that provides the requisite proof that ownership of a trademark has been transferred from one person or entity to another. Whereas it is more prudent to reduce the assignment to writing there are some assignments that are based on oral agreements. These type of assignments are referred to as nunc pro tunc assignments and they operate like the written assignments except since the parties did not create a written agreement at  the time of the original oral assignment the subsequent written assignment document will reflect the date the oral assignment was made instead of the date the written instrument was created even if the period between the oral and  written assignment is months or years apart.   Some of the reasons that trademarks are assigned are: as a result of the death of the original owner or as a result of a corporate merger. In order for an assignment to be valid the trademark must have been used in existing business or commerce. A pending trademark may be assigned but an intent to use trademark cannot because it has not been placed in the stream of commerce at the time of assignment.

WHEN DO YOU NEED AN ASSIGNMENT OF TRADEMARK?

An assignment of a trademark is needed in order to transfer the ownership and rights from one owner to another. The assignment does not have to be for the total goods or services; the assignment can be for partial goods or services such as brand name or identity.

WHAT IS INCLUDED IN AN ASSIGNMENT OF TRADEMARK?

The Assignment of Trademark should include the following:

• The name and address of the assignee

• Statement as to whether it is an application for registered marks or notice to register particulars (relating to the application(s) for registration)

• The date assignment will be effective

• he description of the rights assigned

• The date of entry into the registry

• Statement as to payment of fees