Trademark Assignments

Understanding Trademark Assignments

Before we dive in to the following discussion regarding trademark assignments, it is important to understand the differences between a trademark assignment, a trademark license, and a trademark consent to use agreement. Trademark assignment, licensing, and consent to use agreements all involve trademarks but in different ways and for different purposes.

A trademark assignment represents a complete and permanent transfer of all rights of a trademark from one entity to another. The original owner, known as the assignor, gives up all rights, title, and interest in the trademark to the assignee. After the assignment, the assignee becomes the new owner and can use the trademark without any limitations. An assignment typically involves a one-time payment and needs to be recorded with the trademark office.

In contrast, a trademark license doesn’t involve the transfer of ownership. Instead, it allows a third party, known as the licensee, to use the trademark for a certain period or under specific conditions while the licensor maintains ownership. The licensor can set restrictions on how, when, and where the licensee uses the trademark. The licensee usually pays a fee or royalty to the licensor for this right, and such an agreement can be exclusive or non-exclusive depending on the terms.

Lastly, a trademark consent to use agreement is slightly different. This type of agreement is commonly used when two businesses want to use similar trademarks, but neither wishes to sue the other for infringement. This agreement can prevent potential legal disputes and allows both companies to coexist peacefully in the marketplace. It doesn’t necessarily involve any exchange of money, and both parties retain ownership of their respective trademarks. It’s essentially a mutual understanding between two entities, recognizing the rights of each to use specific trademarks.

In sum, while all three involve trademarks, they differ primarily in terms of the transfer of ownership and the permitted use. Assignments permanently transfer ownership, licenses permit use without transferring ownership, and consent to use agreements allow coexistence of similar trademarks without any conflicts.

A Trademark Is a Symbol of Goodwill

A trademark functions as a symbol of goodwill, playing a vital role in shaping the perception and reputation of a brand or a business in the marketplace.

At its core, a trademark often represents the first interaction between a consumer and a brand. It can be a name, logo, phrase, or design that effectively distinguishes a company’s products or services from those of its competitors. When customers see a trademark, they’re able to quickly identify the source of the product or service, based on their previous experiences or perceptions of the brand.

Over time, as a company consistently delivers quality products or services, its trademark becomes synonymous with its reputation for excellence. Each positive interaction a consumer has with the trademarked goods or services enhances the goodwill associated with the brand. As this goodwill builds, the trademark serves as a visible marker of this accumulated trust and loyalty. Customers often develop an emotional connection with brands they trust, leading to repeat business and referrals, which are key components of goodwill.

Conversely, a trademark can also be a symbol of goodwill in times of crisis or controversy. If a company manages to handle a difficult situation effectively and ethically, its trademark can become a beacon of resilience and trustworthiness. This might increase customer loyalty and brand preference, further cementing the relationship between the trademark and the associated goodwill.

In essence, the value of a trademark extends far beyond its role as a simple identifier. It’s a visual embodiment of a company’s goodwill, summarizing its commitment to quality, ethical business practices, and customer satisfaction. It signifies the relationship between a business and its customers, formed through consistent positive experiences, trust, and loyalty. The more goodwill a company has built through its trademark, the more valuable it is in the eyes of its consumers.

Trademark Assignments In Gross Are Prohibited

A trademark assignment in gross, or a naked assignment, occurs when a trademark is transferred without its corresponding goodwill. This is generally prohibited by law for several reasons.

The main function of a trademark is to serve as a source identifier, signaling to consumers the origin of the goods or services. When consumers see a trademark, they connect it to the quality and reputation of the source company due to their prior experiences or knowledge. This connection forms the basis of the trademark’s goodwill.

When a trademark is assigned in gross, it is separated from its associated goodwill. This disrupts the essential function of the trademark as a source identifier. A new company is now linked to the mark, but without the established reputation and quality that the mark represents in the minds of consumers. This can cause confusion for consumers, as they may associate the quality of the old company with the new one, leading to potential deception and misrepresentation in the market.

Furthermore, allowing assignments in gross could incentivize companies to sell off their trademarks without any concern for maintaining the quality and reputation associated with those trademarks. This could lead to a decrease in overall product and service quality, as new owners could capitalize on the reputation associated with the mark without the obligation to uphold the same standards.

Lastly, the prohibition of assignments in gross is in line with the fundamental principle that trademarks are not merely property that can be bought and sold, but are symbols of a company’s reputation and goodwill in the market. To preserve this function, they must not be separated from the underlying business they represent.

In summary, assignments in gross are prohibited because they undermine the primary function of trademarks as source identifiers, potentially deceive consumers, and diverge from the foundational understanding of trademarks as more than mere property, but rather symbols of a business’s reputation and goodwill.

Trademark Assignments Before Use In Commerce

The prohibition of trademark assignments before use in commerce is rooted in the fundamental principles of trademark law. Trademarks serve as indicators of source, distinguishing goods or services of one enterprise from those of others, and signaling a certain level of quality to consumers. The value of a trademark, and its main function, is inherently tied to the goods or services it’s associated with and the reputation it has developed through commercial use.

Before a trademark has been used in commerce, it has not been associated with any goods or services, nor has it generated any customer recognition or goodwill. As a result, assigning such a trademark would be akin to assigning a mere idea or a proposition without any real substance or value, which contradicts the principle that trademarks are source indicators.

This is also linked to the doctrine against trafficking in trademarks, which basically means that trademarks should not be created solely for the purpose of being sold. They should be used in commerce to represent a particular quality of goods or services. By prohibiting the assignment of trademarks before their use in commerce, the law discourages people from creating and selling trademarks without the intention of actually using them to identify the source of goods or services.

In addition, an assignment before use in commerce could also potentially lead to consumer confusion. If a mark is assigned before it has been used, and then used by the assignee in connection with different goods or services, it may confuse consumers as to the source or quality of these goods or services.

EXCEPTION – Under the Lanham Act, which governs trademark law in the United States, an intent-to-use (ITU) application under Section 1(b) can be assigned, but only under specific circumstances.

ITU applications are based on the applicant’s bona fide intent to use the mark in commerce, and they are not based on any actual use of the trademark. Because a trademark’s main purpose is to signify the source of goods or services, a mark that has not been used yet has not fulfilled this essential function and generally cannot be assigned.

However, the Lanham Act does provide an exception in Section 10(a)(1), which allows for the assignment of an ITU application if it is done in conjunction with the sale of the portion of a business to which the trademark pertains. The assignment must be accompanied by the goodwill of the business connected with the mark. This ensures that the trademark’s function as a source identifier is preserved and that there’s no disruption in the consumer perception of the trademark.

In practical terms, if a company that has filed an ITU application decides to sell the business or the portion of the business related to the potential use of that trademark, the ITU application can be assigned to the buyer as part of that transaction. This exception aligns with the basic principles of trademark law, ensuring that trademarks serve their purpose as identifiers of source even in the context of an ITU application.

In conclusion, while generally an ITU application cannot be assigned, there is an exception for the sale of the business related to the potential use of the trademark, ensuring that the fundamental principles and functions of trademarks are upheld.

USPTO Trademark Assignment and Recordation

The USPTO has a specific process for recording trademark assignments, ensuring that changes in ownership are accurately tracked and reflected in the public record. The first step in this process is the execution of a written assignment document by the parties involved. This document must include certain essential elements such as the assignor (current owner) and the assignee (new owner), a clear description of the trademark, the associated goods or services, and the relevant registration or application number. The document must also clearly express the intent to transfer ownership of the trademark from the assignor to the assignee.

Once the assignment document is ready, it can be submitted to the USPTO for recording. This is usually done electronically through the Electronic Trademark Assignment System (ETAS), which is the USPTO’s online platform for submitting assignment documents. Alternatively, submissions can also be done via mail, but the electronic method is generally quicker and more convenient.

When submitting the assignment, a filing fee is required. The fee is charged per trademark registration or application number, so if multiple marks are being transferred with different numbers, multiple fees will be incurred.

After the assignment document and fees are submitted, the USPTO reviews the submission. If all the necessary elements are present and the fees are correct, the USPTO records the assignment and updates the ownership information in its public database. The USPTO then issues a notice of recordation, confirming the change of ownership.

It’s important to note that the USPTO does not review or enforce the validity of the assignment itself. Its role is simply to record the assignment. It’s up to the parties involved to ensure that the assignment is legally valid.

The recordation of a trademark assignment is a crucial step when a trademark changes hands. It maintains the transparency of trademark ownership and offers public notice of the new owner. Not recording an assignment can lead to potential legal issues down the line, so it’s strongly recommended to record the assignment as soon as possible after it is executed.

Trademark Assignee Does Not Use The Trademark In Commerce

If an assignee of a trademark does not use the mark in commerce following the assignment, there could be several consequences, primarily related to the potential loss of rights in the trademark.

Firstly, in the US, trademark rights are established and maintained through actual use of the mark in commerce. If an assignee fails to use the trademark commercially after the assignment, they risk abandoning the trademark. Under Trademark Law, a trademark is generally considered abandoned if it hasn’t been used in commerce for three consecutive years. Once a trademark is considered abandoned, the rights in the trademark are lost and it can be claimed and used by another party.

Another potential consequence relates to the doctrine of “naked licensing.” If a trademark is assigned and the assignee uses it without maintaining the same quality controls that the original owner used, this could be considered a naked license. A naked license can lead to the trademark losing its significance as a source indicator and could potentially result in a loss of trademark rights.

Finally, it’s important to note that the Trademark Law operates under a “first to use” rather than a “first to file” system. This means that rights in a trademark are granted to the first party to use the trademark in commerce, not the first to register it. So if the assignee fails to use the trademark in commerce, another party who starts using a similar mark for related goods or services could potentially claim superior rights to the trademark, depending on the circumstances.

There is an exception to the “first to use” rule, however.  Under Trademark Law, priority can be established by filing an Intent to Use (ITU) application for federal trademark registration with the USPTO. Upon successful registration, the trademark owner obtains a constructive use date of first use. This means that even if the actual use of the trademark began after a competitor’s use, the registrant can claim priority based on the date of filing the application. However, it is important to note that this constructive use date only applies if the application ultimately turns into a registration through a showing of actual use. Merely filing an application without subsequent use will not confer priority. This exception allows trademark owners to secure priority against competitors by taking proactive steps to protect their marks through the registration process.

In conclusion, it is critical for the assignee to begin using the trademark in commerce as soon as possible after a trademark assignment to maintain the rights in the trademark, prevent potential abandonment, avoid a naked license scenario, and protect against claims from other parties.

Trademark Assignment To Acquire Priority Against Competitors

One might consider assigning a trademark to acquire priority against competitors, but it’s worth scrutinizing whether such a strategy is appropriate or not. Trademarks are more than just symbolic identifiers; they are expressions of quality assurance and goodwill associated with a business. By attempting to use trademark assignment as a tool for market dominance, a company might compromise the fundamental purpose of a trademark, which is to serve as a distinct identifier of the product or service’s source.

Furthermore, in many jurisdictions, a trademark assignment without the corresponding transfer of the goodwill associated with the mark is regarded as a mere ‘assignment in gross’, and it’s often deemed invalid. This is because trademarks are inherently linked to the goods or services they represent, and therefore, using them solely for gaining an unfair advantage over competitors can be seen as misrepresentation to consumers and contrary to the principles of fair competition.

In addition, it is worth noting that using trademark assignment to gain an upper hand in the market may risk damaging the company’s reputation. Consumers value authenticity and transparency, and any indication that a company is manipulating its trademark portfolio for competitive gain could potentially lead to a negative perception of the brand.

Finally, it is important to consider the potential legal implications. In some jurisdictions, such behavior could be considered anticompetitive, especially if it has the effect of distorting competition or creating a barrier to market entry. Such actions could potentially expose a company to legal liability.

In conclusion, while the notion of using a trademark assignment to gain priority against competitors might seem attractive in the short term, it carries potential legal, ethical, and reputational risks. It can also undermine the primary function of a trademark, which is to serve as an identifier of goods or services. Therefore, it is advisable for businesses to tread carefully and consider alternative, more sustainable competitive strategies.