Trademark Assignment

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What is Trademark Assignment Overview

Trademark is an intellectual property and like any other asset, the owner of a trademark has the right to sell, license or transfer the owned intellectual property. Such a transfer can be made through Trademark Assignment Agreement or through Licensing.

A trademark assignment is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party (“assignor”) transfers to the receiving party (“assignee”) its property rights in the mark.

When a trademark is assigned, there is a change in the ownership of the registered brand. But when it’s licensed, the rights in the trademark continue to vest with the original owner but only a few restricted rights are given to the third party. This assignment can be made with or without transferring the business goodwill. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.

Types of Trademark Assignment

Complete Assignment

All the rights vested in the trademark are assigned to the third party, including the rights to further transfer, to earn royalties, to license, etc.

Assignment limited to only some goods/ services

In this assignment, the transfer of ownership is restricted only to certain products/services as decided in the Trademark Assignment Agreement.

Assignment with Goodwill

In this case, the value and the rights attached to the trademark are also transferred. This makes new owner of the trademark eligible to use the assigned brand name with respect to the products and services already sold under the brand name. Also, it grants permission to use the acquired trademark for any new venture or product the new owner creates or manufactures.

Assignment without Goodwill

Also known as Gross Assignment, here the brand owner restricts the rights of the assignee, limiting user rights of the new assignee and prohibiting him/her from using the brand name for the products already in use by the assignor. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand is not transferred to the buyer.

Process for Trademark Assignment

Step 1

Collection & Discussion (Day 1-2)

Step 2

Drafting of Agreement (Day 3-5)

Step 3

Review & Approval (New Step)

Step 4

Filing of Trademark Assignment (Day 6-7)

Documents Required For Trademark Assignment

TM Certificate

Details of the Party

NOC

Benefits Of Trademark Assignment

Get your trademark’s value
Assignment Agreement is Valid Proof
Pre-established brand name
Expansion of business

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