question.jpgIn Trademarks

How can I buy someone’s trademark?

Rights to a trademark can be sold just like other forms of property. When the rights to a trademark are sold, this is known as an assignment of the trademark - the person who is selling the trademark is known as the “assignor” and the purchaser is known as the “assignee.” To purchase someone else’s trademark, you should obviously contact the owner. If the mark you want to purchase is registered with a state agency or with the Patent and Trademark Office, you can search the relevant registration records to find the trademark’s owner. Once you have contacted the trademark’s owner, you should negotiate the assignment price.

However, this negotiation must include more than just an assignment of the trademark – the assignor must also assign the trademark’s underlying goodwill. For other forms of intellectual property, such as patents, the assignment of rights is a very straightforward sale. However, for the assignment of trademark rights to be valid and enforceable, the assignor must not just assign the trademark itself - he must also transfer the goodwill (the value and name recognition) associated with that mark. Most courts have interpreted this as requiring that the assignor also sell its related underlying assets, to ensure that the standards of quality remain the same (for example, a valid assignment might include the assignor selling the equipment it uses for making the related goods that are sold with the trademark, or the details of how to make those goods). What should specifically be included in a trademark assignment to meet this requirement will vary on a case-by-case basis. Where a trademark is sold/assigned without the underlying goodwill, this is known as an “in gross assignment,” and it is not considered valid. In fact, the trademark will be deemed abandoned and neither you nor the assignor will have any rights in the mark.

Finally, if the assigned trademark is registered with the Patent and Trademark Office, you should also record the eventual assignment with the Patent and Trademark Office so that the registration records are properly updated.