Can I Sell My Trademark to Another Company?

A trademark is an important form of intellectual property (IP). As a property right, it can be sold/licensed. Selling a trademark involves legally transferring ownership rights, including the goodwill associated with the brand. It is essential to follow proper procedures to ensure the assignment is valid and enforceable. At Perkins Law — Brand Protection, we help businesses and entrepreneurs navigate all types of IP issues. Here, our Florida trademark attorney provides an overview of the key things to know about transferring trademark rights.

Your Options for Transferring a Trademark

License a Trademark  

Your first option for profiting commercially from a trademark does not actually involve “selling” the trademark. Licensing a trademark allows the owner (licensor) to grant another party (licensee) the right to use the mark without giving up ownership. A licensing agreement is a powerful tool for expanding brand recognition, entering new markets, and/or generating revenue. There are two broad options for trademark licensing agreements:

• Exclusive Trademark License: Only the licensee may use it.
• Non-Exclusive Trademark License: The owner may continue using it or license it to others.

A trademark licensing agreement must be entered into with care. To preserve trademark rights, the licensor must maintain quality control over how the mark is used. The failure to supervise the licensee’s use can result in what’s called “naked licensing,” which can actually void trademark protection. A written license agreement should clearly define the scope of use, duration, quality standards, royalties (if any), and termination rights.

Assignment a Trademark

The more direct option for “selling” a trademark is called assignment. The United States Patent and Trademark Office (USPTO) explains that assignment of a trademark is the permanent transfer of ownership of a mark from one party to another. In other words, the assignee becomes the new legal owner of the trademark. As such, they take over all associated rights, including the ability to enforce, license, or sell it again in the future. Assignments are often used in mergers, acquisitions, brand sales, or corporate restructuring. Unlike licensing, an assignment is not temporary and it is not conditional. It is a property sale. That means that it is a complete transfer of rights. A valid trademark assignment must include the goodwill associated with the mark. Goodwill refers to the brand reputation and consumer recognition that gives the mark its value. An assignment without goodwill may be considered invalid. The agreement should be in writing and signed by both parties and it should describe the trademark(s) being transferred.

Contact Our Florida Trademark Lawyer for a Confidential Consultation

At Perkins Law — Brand Protection, our Florida trademark attorney has the knowledge, skills, and experience that you can rely on when it matters most. Your brand matters. If you have questions about trademark transfers, we can help. Contact us now for a fully confidential consultation. Our firm handles trademark law matters all across South Florida, including in Miami, Miami Beach, Coral Gables, Boca Raton, Fort Lauderdale, Parkland, West Palm Beach, and Jupiter.

Source:

uspto.gov/trademarks/trademark-assignments-change-search-ownership