Like patents and copyright registrations, registered trademarks are concrete assets that can be sold, transferred, or licensed to others. A pending trademark application that has not yet matured into a registration can also be transferred to a new owner, under certain circumstances.
The transfer of a trademark to a new owner, for compensation or otherwise, is called an assignment. 37 C.F.R. §3.1. If the trademark in question is registered or pending registration, the assignment should be filed with the Trademark Office so that its records will reflect the change in ownership.
Trademarks That Have Been Used In Commerce
If you have already used your trademark in commerce, the assignment rules for your trademark application are the same as for a registered trademark. A registered trademark can be assigned, as long as it is transferred along with “the good will of the business in which the mark is used, or that part of the good will of the business connected with the use of and symbolized by the mark.” TMEP § 501.01
So if you have a trademark for a shoe brand and part of your business is selling your branded shoes, you can sell your shoe trademark to another company, but you must also sell the portion of your business that sells shoes under that trademark. You cannot simply sell the brand name to the other company to place on their own shoes and then continue selling your shoes under a different name.
The reason for this is that trademark rights exist to avoid consumer confusion. Companies are not granted exclusive rights to brand names just because they were they first to think them up. Rather, the purpose of exclusive trademark rights is to allow consumers to identify products that they are familiar with and to expect a consistent source for the product. Because of trademark rights, when you buy a computer with the Apple logo on it, you know that it is made by the Apple Computer Company and not some fly-by-night computer startup.
The trafficking of trademarks apart from the business or goodwill they are associated with is antithetical to this purpose. If Apple sold the apple logo to some other company and the company started using the logo on their own, completely different computers, this would be very confusing for consumers. Therefore this type of trafficking in brand names and other trademarks is not allowed.
Intent-to-Use Applications
You can apply for a trademark registration before you being using that trademark in commerce. Although a registration cannot be issued until use begins, the application will “hold your place in line” and prevent other people who thought of the trademark after you from using it.
However, an intent-to-use application cannot be assigned unless it pertains to an ongoing and existing business (or portion of a business) and is transferred along with that business. TMEP § 501.01 So if you have an active business selling herbal supplements and apply for a new trademark you intend to use with your business, you can sell or transfer that trademark application along with your business to another company.
On the other hand, if you intend to start a business selling herbal supplements in the future, and apply for a trademark for that business, you cannot assign your application to anyone else. You cannot even assign your application from yourself to your new LLC that you own 100% and intend to use to start your business. See, for example, Opposition No. 118,181, Pfizer, Inc. v. Gregg Hamerschlag.
Avoiding an invalid assignment is critical. If you assign an application when you should not, the result is not an invalidation of your assignment, but an invalidation of your application!
Without this requirement, an applicant would be free to assign an intent-to-use application to anyone, since the goodwill that would have to be transferred is trivial or nonexistent. Trademark speculation, like domain name speculation, would probably be rampant, with entrepreneurs registering hundreds or, like modern domainers, hundreds of thousands, of potentially valuable trademarks and holding them for sale to actual businesses. The requirement of an ongoing business avoids the trafficking of trademarks that the goodwill requirement is meant to avoid.
More reading:
U.S. Assignments (International Trademark Association)
Avoiding illegal trademark transfers: introducing the assignment-in-gross (Florida Bar Journal)
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