Can you sell or transfer a trademark?

A trademark, trade name or logo can be sold or assigned, to another party. This may happen, for example, when a company is sold.

What is required for a valid trademark assignment? A valid transfer should:

Be in writing;
Identify the parties to the assignment, that is, the assignor and the assignee;
Identify the mark(s) to be assigned and any relevant applications or registrations for the mark(s);
Identify the goods and services to be assigned with the mark;
Have a payment (consideration);
Be dated for the effective date of the transfer;
Be signed by both parties (the second to accept the transfer); and
Include the transfer of goodwill.

Some considerations in a sale or transfer of the trademark rights:

Are there related marks, or trade names, domain names, or social media pages that should also be transferred?
Should the new owner have the right to bring actions and recover for past infringements?
Inclusion of representations and warranties?
Is indemnification needed for the vendor or purchaser?
Who is responsible for recording the assignment and paying the recordation fees?
Is it a whole or partial assignment (separated by territory and/or goods and services)
What is the territorial scope of the assignment?
Will there be future cooperation between the transferring parties (e.g., if related documents subsequently need to be executed)?
Are there any coexistence agreements that need to be maintained?

Email us at orders@trademarkraft.com for a template for a trademark assignment, which we can customize to the needs of your particular transaction.

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August 2024