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Assignment without the Goodwill of Business The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.
The assignment is a contract, which can cover a few different items. It may be an assignment of common law trademark rights. There may also be a federal trademark registration involved, as well. You can even assign a trademark application.
A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment.
Basically, a mark owner may: Assign all rights in the mark to another entity (outright sale). Assign some rights in the mark to another entity (partial assignment). Grant another entity the right to use the mark for certain purposes for a certain period of time (license).
Type or print in blue or black ink. Mail the assignment with original signatures and filing fee of $30.00 to the Secretary of State, Trademark Unit, P.O. Box 942870, Sacramento, CA 94277-2870. Indicate at the top of the application which type of registration is being assigned.
Updated November 25, 2020: USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand.
Trademark assignments must be in writing. The recording date of a document is the date it is filed with the USPTO. There may be assignments that are in whole or others that are considered to be partial assignments. This can become complicated if more than one person owns the trademark.
The Trademark Assignment Should Be in Writing Although an assignment need not be in writing to be effective, it's strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.