question.jpgIn Trademarks

What is an assignment?

In the context of trademark law, assignment is where the rights to a trademark are sold by its owner (known as the “assignor” in this transaction) to some third party (known as the “assignee” in this transaction). A trademark can be assigned from its owner to any third party as long as the goodwill (the value and name recognition) associated with that mark is also transferred. Most courts have interpreted this as a requirement that the assignor 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). However, what specifically should be included in a trademark assignment will vary on a case-by-case basis.

If a trademark is assigned without the underlying goodwill, this is known as an “assignment in gross” and is not considered enforceable or valid. In fact, if there is an assignment in gross, the trademark will be deemed abandoned and neither party will have any rights in the mark.