question.jpgIn Trademarks

What is an assignment in gross?

An assignment in gross is where someone assigns (that is, sells) their trademark without including the underlying goodwill (the value and name recognition) associated with that mark. Such an assignment in gross is not considered enforceable or valid and where there’s such an assignment in gross, the trademark will be deemed abandoned and neither party will have any rights in the mark.

To avoid this from happening, an assignment must include the underlying goodwill. Most courts have interpreted this as a requirement that the assignor sell its related underlying assets, so as 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, specifically, should be included in a trademark assignment varies on a case-by-case basis.