Transfering ownership and licensing rights in trademarks; benefits and risks
Yes. A trademark may be transferred at any time. It may be transferred before an application for registration is filed, while an application is pending, or after registration. If the transfer occurs after filing an Intent-to-Use application, then it may be necessary to wait until an Amendment to Allege Use or a Statement of Use […]
Can a trademark be transferred while a registration application is pending? Read More »
An assignment in gross is not valid. Worse, it will cause the trademark to be deemed abandoned. This means the assignee does not acquire trademark rights and the assignor (trademark owner) loses them. The priority date of the trademark is also lost. These are drastic consequences. They are deemed necessary to prevent consumer confusion. The
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For the purposes of trademark law, goodwill refers to the inherent value and name recognition associated with a trademark.
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An assignment in gross is a transfer of a business’s trademark without also transferring the goodwill of the business.
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Yes. Trademark rights can be lost through naked licensing. If a trademark owner fails to exercise reasonable control over the licensee’s products or services, the trademark may cease to function as an accurate identifier of the source of the product or services. The purpose of a trademark is to inform consumers about the source of
Can a trademark be lost (abandoned) through naked licensing? Read More »
Here are some examples of naked licensing: A trademark owner licenses it to a manufacturer but does not review the products, instead allowing the licensee to use it on shoddy, inferior goods. A contract grants a license but fails to include quality standards or guidelines. A franchisor licenses its trademark to the franchisee but fails
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Naked licensing is not a form of adult entertainment. It is the licensing of a trademark without exercising control over the quality of the goods or services produced or provided by the licensee. A license agreement that does not contain quality control provisions is at risk of being deemed a naked licensing arrangement.
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While recordation of a trademark assignment is not mandatory, it is strongly recommended because it puts potential users and acquirers of interests and rights in the trademark on notice of the identity of the new owner. This can prevent, and help resolve, disputes over the validity of the claims of subsequent purchasers and licensees. If
Should a transfer or assignment of a trademark be recorded with the USPTO? Read More »
A trademark assignment transfers ownership of the trademark to another. A trademark license authorizes a person other than the trademark owner to make use of a trademark. A license does not transfer ownership of the trademark to the licensee. An exclusive trademark license transfers the exclusive right to use the trademark. A non-exclusive trademark license
What is the difference between an assignment and a license of a trademark? Read More »
Yes. Trademark ownership may be transferred and trademark rights may be licensed to others.
Can trademarks be transferred and licensed to others? Read More »
