By: Angela C. Wetherby
A trademark is a word, phrase, symbol, or design (or combination thereof) that identifies and distinguishes the source of the goods of one party from those of others. A service mark is similar to a trademark; however, rather than goods, a service mark distinguishes the source of a service. Both trademarks and service marks are unique in that while they are both intangible, they still carry a certain amount of value to the owner of the mark. For example, Nike and its brand of products would not have the same allure to customers if those products did not display the famous “swoosh.” McDonald’s would not be the same without the golden arches that line most highways in America. These symbols are used by companies to distinguish themselves from competitors and to communicate a particular message to consumers. Given the inherent monetary value of trademarks and service marks to the businesses that they represent, it raises the question: can you transfer or assign your interest in a trademark or service mark?
First, all trademarks and service marks should be registered with the United States Patent and Trademark Office (USPTO). Generally speaking, a registered trademark or a trademark for which an application to register has been filed with the USPTO may be assigned, along with the goodwill of the business in which the mark is used. An assignment of a trademark amounts to the transfer of a party’s entire right, title, and interest in a registered mark or a mark for which an application to register has been filed. After a valid assignment, the assignee may assert exclusive rights over the mark.
An assignment is different than a license. Unlike an actual transfer, a license gives the designated licensee limited permission to use the mark. For example, a franchisor restaurant may license the use of its trademark or service mark to an individually owned franchisee restaurant.
If you own an existing trademark or service mark, or you are considering the possibility of registering a new mark, the attorneys at Inosencio & Fisk, PLLC, have the experience necessary to help you navigate what might otherwise be a complicated path.
This website and the contents thereof is designed for general information only and information should not be considered as formal legal advice nor the formation of an attorney/client relationship. The purpose of this post is to provide a brief and cursory overview of the subject matter contained herein. It is important to consult with an attorney as there are various other implications that should be taken into consideration when it comes to issues surrounding the trademarks and service marks
If you have any questions regarding regarding this blog post, please contact Inosencio & Fisk, PLLC, at (517) 796-1444.