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Assignment of a trademark is a transfer in the ownership of the trademark registration. Whereas in licensing, the ownership and proprietary rights of the trademark continue to remain with the original owner, but only a few restricted rights to use the brand are given to the third party.
The terms Assignment and Transmission are used interchangeably. An assignment is a transfer of ownership of a brand. In contrast, transmission is an agreement that retains ownership of a trademark but allows another party to use part of the trademark, but not the entire 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.
Assignment of a trademark occurs when the ownership of such mark as such, is transferred from one party to another whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trade marks.
Steps in Assigning a Trademark Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee. Fill out the Recordation Form Cover Sheet, which can be completed online.
To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted: (1) A copy of the original document; (2) A copy of an extract from the document evidencing the effect on title; or.
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.
Generally, paper filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.
Typically only the party assigning the intellectual property must sign the assignment, and while notarization is strongly preferred it is not strictly required.