What Is Assignment?

On the other hand, a Trademark Assignment Agreement Is a sales contract where you sell your brand to another party who becomes the new owner of your trademark.

Assignment Agreements are typically straightforward and require little contractual language because a sale is a sale. Subjects like transfer of ownership and payment details require clarification in the agreement, but the former owner relinquishes any control at the time of purchase.

The new owner of your trademark now has complete control of how and where to use their new trademark with no obligation to consult with the original trademark registrant.

Goodwill

When you assign a trademark, all the goodwill associated with that brand is part of the deal. The two are inseparable because, in the eyes of the law, they are the same.

However, there are a couple of ways the original trademark owner can retain some rights to using the trademark.

Example number one:

Suppose you have five distinctly different products or services registered under the same mark, products A, B, C, D, and E. It’s possible to split that trademark by assigning products A and B while maintaining ownership of products C, D, and E.

Example number two:

Company A assigns (sells) its trademark to company B. Company B then grants a license to company A, allowing them to continue operating under the same mark.

An assignment with a license back is a role reversal where the new owner grants a license to the previous trademark owner after the sale. The new owner has the same rights as the old owner and can enter into licensing agreements as they see fit.

Summary

Trademark Assignment Agreements are a contract to sell your trademark to a second party. All rights to that trademark will belong to the new entity, and the original owner relinquishes all rights to use that trademark. However, they may agree to incorporate a couple of possible exceptions into the agreement.

Developing a sound trademark strategy from the beginning can be crucial to the growth and success of your brand. Understand your options and plan confidently by working with Trademark Factory®’s professional trademark attorneys and staff and our unprecedented all-inclusive, 100% cash-back guarantee of trademark success.

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