How to Transfer a Trademark: Trademark Assignment

A trademark is an important business asset in the form of intellectual property, this is why understanding Trademark Assignment is so important.  

So, if you have ever asked yourself; how do I transfer a trade mark, then this post will further explain the key considerations you will need to make when assessing a transfer.

Table of Contents

What is a Trademark 

But before we go any further, let’s have a refresher of what trademarks and what they mean. Trademarks can help you and your business protect your brand by identifying the signs that operate as a distinctive mark. 

Common symbols for trademarks come in two forms:

  • ™ for unregistered trademarks
  • ® for registered trademarks

Both of these symbols located after your distinctive mark gives your brand the ability to enhance respect and differentiate from competitors. 

Trademarks take many forms, however, must be capable of graphical representation. Successful trademark registration provides exclusive rights to use your trademark as a marker of your goods or services in the marketplace. 

Registering your trademark means you become the owner of a trademark and that gives you the right to license others or to fully assign ownership to someone else. It is important to understand trademark assignment as it can assist your brand’s growth. At Lawpath we provide a trademark assignment in the form of a deed for the assignment of registered trade marks and of domain names that include trade marks. 

Sign up for one of our legal plans or get started for free today.

Licensing others to use trademarks

Trademark licensing refers to the process where the owner of the trademark (licensor) gives another party (licensee) the right to use their trademark in the marketplace. 

A common example of trademark licensing is film merchandising, where manufacturers (licensee) obtain a license from a film studio (licensor) to use their mark on goods. Licensing can increase consumer recognition and goodwill around your brand and expand your brand’s reach.

Licensing and the Key Considerations

Licensors should be aware of the following considerations when looking to license the use of their trademark to others;

Control Over the Trademark 

The licensor must have control of the trademark as defined in the Trademarks Act to license its use. Registering the trademark establishes this control.

Type of License 

Licensors may offer three different types of trademark licenses.

  1. Exclusive license – grants commercial use rights solely to the licensee and excludes licensor from using the mark
  2. Sole license – both licensee and licensor can use the mark, but no other party can
  3. Non-exclusive license – Multiple licensees can use the mark

Trademark License Agreement 

It is essential to set out the terms of the license. At Lawpath we can provide you with a Trademark License Agreement to make the process of your application easier. 

Assigning a Trademark to Others

Registered trademarks

The full transfer of a trademark to another person is called Trademark Assignment. This acts as a deed of assignment. When assigning a trademark to someone else, a you, as the current owner are effectively transferring your legal trademark rights to license and exclusively use the trademark over to them as the new owner. 

Assignment of a trademark occurs either through full assignment and a transfer of ownership or by merely adding additional owners of the trademark as a partial assignment. 

A letter of assignment can also be provided by the original owner. Some key legal considerations when assigning trademarks and transferring ownership of a trademark are;

  • Notifying the Registrar of Trademarks – Either the assignor or assignee must notify the Registrar of Trademarks at IP Australia through use of an approved form that the full change of ownership has taken place. This is important because it allows the Trademarks Register to reflect the real business situation.
  • Eligibility – Assignees must be eligible to obtain ownership. Generally, they must be a legal entity, such as a person, company, or trust.
  • Supporting documentation – Evidence signed by all relevant parties detailing the transfer of ownership must be provided.
  • Restrictions – Trademarks can’t be assigned with reference to a particular geographic area.

For a step-by-step guide on how to assign ownership, you can visit IP Australia.

Unregistered Trademarks

Registered trademarks can be assigned with or without the business’ goodwill. In contrast, unregistered trademarks can only be assigned with the business’ goodwill. 

This means that an unregistered trademark can only be assigned alongside the reputation gained by a brand over time through use of its goods/services in the marketplace.

Certification Trademarks

Certification trademarks indicate a specific quality of goods or services. This particular quality may be quality, content, or geographic origin. For example, the Parmigiano-Reggiano indicates that particular cheese originates from the Parma region in Italy.

 For certification trademarks in Australia such as those applying to particular wine growing regions or ‘Australian-Made,’ eligibility for assignment must first be assessed by IP Australia. Following this, the Australian Competition & Consumer Commission will determine if the mark is eligible for assignment.

Key Takeaways

Registering your trademark provides you with solid legal protections and adds authenticity to your brand in the marketplace. Similarly, licensing someone else to use your trademark is different from assigning the trademark to someone else.

 If you have any questions regarding trademarks and how they can help you and your business, Lawpath has a variety of highly experienced trademark lawyers to provide any necessary legal advice.

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