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 email@example.com for a template for a trademark assignment, which we can customize to the needs of your particular transaction.