assignment of unregistered trademark

Can an Unregistered Trademarks be Assigned?

As per the provisions of the Trademarks Act, 1999, an unregistered trademark can be transferred with or without goodwill. Assignment deals with the transferring of the rights vested with the trademark of the proprietor, who was using the unregistered trademark over the period of a few years, to a third party.

Trademarks are typically used as an indication that includes, any insignia, words, or a combination of words, or symbols that essentially distinguishes the goods or services of the given brand against the others in the market. A trademark’s role is to identify and specify that particular good or service belongs to the respective brand. Trademark is one of the branches of Intellectual Property  and can be either registered or unregistered.   

Table of Contents

Unregistered Trademarks

The major difference between a registered and unregistered trademark is that the latter is not registered under the Trademarks Act , 1999. However, this does not make an unregistered trademark go unprotected.   It would only imply that those marks are not protected under the Act, but can claim protection under common law. Therefore, in case of Trademark Infringement , no action can be claimed under the Trademarks Act, 1999 but the aggrieved person can claim protection under the law of Torts for passing off. However, under the said circumstances, the aggrieved party has to prove that the unregistered trademark had been in usage for a considerable period of time, and has built a reputation or goodwill in relation to the goods or services the unregistered trademark is attached to.

Assignment of Trademarks

Trademarks, like any other intellectual property, can be assigned to a third party. The assignment should be made in writing and should facilitate the transfer of the word, phrase, designs, and symbol of the trademark from its registered proprietor to another party. The registered proprietor transferring the trademark is called the ‘assignor’ and the party that receives the trademark rights is the ‘assignee’. In an assignment, the proprietor’s right, title, and interest over the said trademark are transferred to the assignee. An assignment, strictly speaking, paves way for the transfer of ownership with or without the goodwill of the business. In the case of registered trademarks, the assignment has to be notified to the Registrar of Trademarks.

Different ways of Assigning Trademarks

The Trademark Assignment Deed  can be done in the following ways:

Complete Assignment of Trademarks

As the name suggests, all the rights vested with the trademark like the royalties, rights to transfer the trademark again to another party, etc. are transmitted from the proprietor to the assignee.

Partial Assignment of Trademarks

Here the assignment is constrained by the assignor or the registered trademark proprietor only to a specific set of products or services. For instance, say a trademark named ‘OXA’ has entered into an assignment agreement. The agreement can specify that the assignee can use the said trademark, ‘OXA’ only for textile products, and it cannot be used for any other product or service.

Transfer with Goodwill:

When the transfer is done with the goodwill, the rights and value vested with a trademark are assigned to the assignee and the mark can be used by the assignee for marketing the same product or service the assignor is dealing with.

For example, if the proprietor X, of the trademark ‘OXA’, which is attached to the manufacturing and selling of stoves, has done an assignment of the trademark with goodwill to another person Y, Y can use the trademark ‘OXA’ for the manufacturing and selling of stoves.

  Transfer without goodwill.

In this case, the assignor restricts the assignee from entering the market where the assignor operates. This implies that the assignor and the assignee are free to adopt the same trademark but not for identical products or services . Here, if the assignor deals with the trademark ‘OXA’ for the manufacturing and selling of stoves, a transfer without goodwill would mean that the assignee can use the trademark ‘OXA’ on any other product or service other than that of stoves.

Regardless of whether a trademark is registered or unregistered, it can be assigned with or without goodwill. Section 39 of the Trademarks Act, 1999 speaks specifically about unregistered trademarks. It states that even if a trademark is not registered, it could still be assigned or transmitted with or without the goodwill of the concerned business. In order to make the assignment of an unregistered trademark, a request has to be raised using the form TM-16.

Procedure for Assignment of Trademark

• Making an Application:

The first step in the process of trademark assignment is to make an application for the assignment of the trademark. This can be done either by the assignor or the assignee or both of them

• Furnishing of Documents:

The applicant has to present copies of all the mandatory documents duly attested along with the stipulated forms as stated by the Trademarks Act, 1999. The form TM-P shall be attached with the documents

• Filing of Application with the Registrar:

After the assignment is accomplished, the Registrar: https://ipindia.gov.in/ of the respective jurisdiction has to be notified within 3 months from the date of making the assignment. When the assignment of the registered or unregistered trademark is accomplished, a direction from the Registrar pertaining to the same is compulsory before the expiry of 3 months

• Publication of Advertisement:

The applicant has to publish an advertisement as directed by the Registrar and a copy of the same along with the Registrar’s direction is required to be attached.

• Transfer of the Ownership and the Rights of Unregistered Trademark:

The Registrar runs a check over the forms and documents thus submitted, and if there are no discrepancies, the ownership of the trademark is transferred from the assignor to the assignee. If you have any queries reach out to our experts from Vakilsearch .

While unregistered trademarks lack the formal protections afforded to registered marks, they can still be assigned under certain circumstances. Assigning an unregistered trademark involves transferring the rights to use the mark from one party to another. However, it’s important to note that without registration, the assignment may carry inherent risks, such as limited legal protection and potential disputes over ownership. Therefore, parties involved in assigning unregistered trademarks should exercise caution and consider seeking legal advice to mitigate risks and ensure a smooth transfer process.

Can an unregistered trademark be licensed?

Yes, even without registration, you can license an unregistered trademark for use by others.

Can I use TM if not registered?

Yes, using TM signifies that you claim rights to the mark, even if it's not registered.

What is the position of an unregistered trademark in India?

Unregistered trademarks are protected under common law in India, offering some level of legal recourse against passing off.

What is the difference between TM and registered trademark?

TM indicates a claim to a trademark, while ® signifies a registered trademark.

What is the difference between registered and not registered TM?

A registered trademark has legal protection and exclusive rights, while an unregistered trademark relies on common law for protection.

What are the disadvantages of unregistered trademarks?

Unregistered trademarks have limited legal protection and may face challenges in enforcement compared to registered marks.

What happens if a trademark is objected to?

If a trademark application is objected to, you'll need to respond to the objection with evidence and arguments to overcome it.

What is the validity of a registered trademark?

A registered trademark is valid for 10 years in India and can be renewed indefinitely.

What is the fee for trademark objection?

The fee for responding to a trademark objection varies depending on the circumstances and legal representation required.

Also, Read:

• Benefits of Trademark Protection
• Types of Trademark Assignment
• Importance of Trademark Renewal

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• Unregistered Trademarks Under Federal and State Laws

15 U.S.C. § 1125(a) creates a civil cause of action for claims of false designation of origin and false advertising. This provides federal protection for unregistered marks. Marks not registered with the United States Patent and Trademark Office (USPTO) may be protected at the state level by common law or statutes associated with unfair competition. Most states have adopted either the Uniform Deceptive Trade Practices Act or the Model Trademark Bill.

Unregistered trademarks may still be protected by common law and unfair competition laws.

If you do not register your trademark, you will have legal rights only within the geographic areas where you operate. This means you may be able to stop a subsequent user of the mark, even if it is a bigger company, from using the mark in your geographic area only. You can claim trademark rights in your unregistered trademark as long as it is distinctive and identifies or distinguishes your products or services. A trade name for your business is not the same as an unregistered trademark and is not given the same protections under federal trademark law.

Although the range of protection is limited to the region where you use your unregistered trademark, you can protect an unregistered but valid trademark from infringement and dilution under common law. This means you can send a cease and desist letter to try to stop someone from using the trademark without your license.

If you want to bring a lawsuit, however, you will have to prove that your mark is a valid trademark, usually only in state or local courts. You can bring the lawsuit in federal court only if the infringer lives in a different state and the amount in controversy is more than $75,000, or if your case depends on interpreting the Lanham Act or other federal law.

Being the first person to file an application to register a trademark does not guarantee that you will get priority over the trademark. Instead, the date on which a mark was first used determines the right of priority to the mark. This means that you can get trademark rights limited by territory even if you are a tiny, lesser-known business with an unregistered trademark. However, the filing date of a registration is considered constructive use of a mark, and it gives priority over a later date of actual common law use in commerce if the registration application results in a registration.

Benefits of Registering a Trademark

The laws surrounding unregistered marks are derived from principles of unfair competition or unfair business. Specifically, it is considered unfair for somebody to trade on the goodwill you have built up around a mark in order to sell competing goods or services. A famous unregistered trademark can be protected from dilution.

However, there are numerous advantages to registering a trademark that you have used in interstate commerce. These advantages include the right to bring a lawsuit against an infringer in federal court, incontestable status after five years of registration, presumption of ownership, enhanced remedies, and constructive notice of ownership to others around the nation. Incontestability can be helpful because it means that a trademark can no longer be attacked for simply being descriptive, even if it is merely descriptive.

It may be especially important to register a trademark if you are doing business over the internet.

Registration can be a great help when fighting someone for a domain name. Moreover, a small business can become large through online sales. Registration of a trademark can be valuable later, even if its value is not immediately apparent to a small business. A trademark is a form of intellectual property, and as such, it is considered an asset that adds value to a business.

Last reviewed October 2023

Intellectual Property Law Center Contents   

• Intellectual Property Law Center
• Copyright Law
• Trademarks, Service Marks, and Related Legal Terms
• Cybersquatting Involving Trademarks and Service Marks
• Trademark Infringement & Related Legal Claims
• Strength of Trademarks and Service Marks
• Trade Dress Under the Law
• Trade Names Under the Law
• Trademark Dilution Law
• Enforcing Trademark Rights Through Lawsuits & Other Strategies
• Trademark Registration Under the Law
• Trademark Classes Defined by Law
• How a Trademark Search Can Protect Your Legal Interests
• Naked Licenses of Trademarks to Unmonitored Licensees
• Trademark Legal Forms: 50-State Survey
• Trade Secret Law
• Choosing Among Patent, Copyright, and Trademark for Legal Protection
• Intellectual Property Law FAQs
• Find a Trademarks Lawyer

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Unregistered Trademarks Under U.S. Trademark Law

355 Bryant Street, Suite 403 | San Francisco, CA 94107 | Phone: 650.843.0988 | Fax: 650.618.0488

Author: Linnea E. Vail

Question Presented

Can a common law trademark prevail over a registered trademark in cancellation or similar proceedings, and if so, how?

• Trademark Law Generally

Federal trademark law is codified under the Lanham Act, which provides federal protection for distinctive marks that are used in commerce. [1] Federal protection for unregistered marks is generally available under 15 U.S.C. § 1125(a), which creates a civil cause of action for claims of false designation of origin and false advertising.  Although registration is not a prerequisite to federal trademark protection, registered marks enjoy significant advantages over unregistered marks including: registration serves as nationwide constructive notice of ownership and use of the mark under 15 U.S.C. § 1072; and a registered mark may achieve incontestable status after five years of continuous use under 15 U.S.C. § 1065, which enhances the owner’s rights by eliminating a number of defenses to claims of infringement. [2]

Though a trademark owner can pursue registration with the United States Patent and Trademark Office (“ USPTO ”), the U.S. follows the “first-to-use” practice, meaning that the owner who is first to use a mark has priority over a third party when determining who has the exclusive rights to use a trademark. This contrasts with the “first-to-file” practice, which, as evidenced by its name, grants priority to the owner who files an application for the trademark first.

Because the U.S. follows the first to use protocol, an owner can nonetheless own the exclusive rights to a trademark, even if they have not registered the mark. This is known as a “common law” trademark. This can be a cost-effective and efficient method for branding an owners’ goods and services, because it does not require the often costly and time-consuming procedures for filing a federal trademark application. It should be noted that the United States and India follow the first to use protocol, and the European Union and United Kingdom use the first to file protocol. [3]

Unfortunately for common law trademark owners, an owner’s trademark rights in an unregistered mark extend only to the geographic areas where the mark is actually used and other locales where the owner’s use of the mark would naturally extend. [4] In contrast, a registered trademark often provides for national protection across the United States and is not limited to those geographic areas where the trademark is used. [5] It is therefore highly recommended that trademark owners pursue registration.

2.   Trademark Cancellation

In addition to the benefits of trademark registration discussed above, a registered trademark can achieve “incontestable” status. An incontestable trademark is one that has been registered and in use for five years, and it serves as conclusive evidence regarding the validity and registration of the trademark, as well as the owner’s ownership and exclusive right to use the trademark in connection with the registered goods and services. [6] A trademark achieving incontestable status helps trademark owners not only helps deter potential infringers, but it also can be advantageous in trademark litigation.

In Otto Roth & Co. v. Universal Foods Corp ., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981), the United States Court of Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit) evaluated an appeal from a Trademark Trial and Appeal Board (“ TTAB ”) arising from an opposition filed against registration for the mark ESPRIT NOUVEAU. The opposer, Lankor International, Inc. (“ Lankor ”), had attempted to file an application for BRIE NOUVEAU for cheese, but the examining attorney determined that the mark was merely descriptive of the underlying goods and services. [7] Subsequently, Lankor filed an opposition to the registration of the mark ESPRIT NOUVEAU by Otto Roth Company, Inc. (“ Otto Roth ”) for cheese products, alleging a likelihood of confusion with their existing use of the mark BRIE NOUVEAU.

The TTAB evaluated and sustained the opposition, declaring that there were significant similarities between the marks in both sound and appearance and “that consumers might rely upon NOUVEAU as the distinguishing feature of the marks (especially in the absence of evidence to show that NOUVEAU is used by others in the cheese industry). [8] ”

In its opinion, the Court determined that “One who opposes on the ground that registration should be refused as proscribed by section 2(e)(1) alleges use of, or the right to use, a descriptive term in his business and is trying to prevent a claim of exclusive ownership of that term, asserting a privilege which he holds in common with all others, including the applicant, to the free use of the language. [9] ” The Court further argued that “prior use of a term in a descriptive sense is sufficient to successfully oppose registration of an otherwise registrable mark provided (1) there is a likelihood that consumers will confuse the two and thus the source of the goods to which they are applied, or (2) that a registration would frustrate the opposer’s right to use the term in a descriptive sense […] [10] ”

The Court ultimately vacated the prior decision, stating that even if Lankor was to prove there was a likelihood of confusion and that the registration of ESPRIT NOUVEAU would frustrate their ability to use the term, Lankor was nonetheless required to prove that BRIE NOUVEAU had acquired a secondary meaning, because the examiner had previously determined that the mark was “merely descriptive or deceptively misdescriptive” of brie cheese. [11] The Court held, ““Assuming that the [TTAB] properly held that BRIE NOUVEAU is merely descriptive or deceptively misdescriptive, it did not require, as it should have, that appellee prove secondary meaning before applying the § 2(d) likelihood of confusion test. [12] ”

Therefore, the ruling from Otto makes clear that where a dispute exists between a common law trademark holder and an owner of a registered mark, the common law holder must allege that the mark has acquired secondary meaning in order to challenge the registration.

The Otto holding remains precedential. In Natural Dog Acquisition LLC v. Pet Go Round of Greensboro , Cancellation No. 92074028 (August 2, 2022) [not precedential], the TTAB denied a petition for cancellation of a registration for the mark THE NATURAL DOG FOOD MARKET, finding that Petitioner failed to prove priority of use of its common law marks NATURAL DOG COMPANY. In reviewing the Otto rule, the TTAB required that the Petitioner prove acquired distinctiveness or secondary meaning in the common law marks. The TTAB concluded that DOG COMPANY was a highly descriptive term for a characteristic of Petitioner’s goods and services. Furthermore, Petitioner attempted to claim that its marks acquired distinctiveness in 2008 by testifying that its sales that year were $256, which was evidently not nearly enough to prove its priority over the registered marks. The TTAB determined that its sales figures prior to 2014 (totaling $514,798) were “unimpressive. [13] ” The Board concluded that “even if Petitioner’s use was substantially exclusive and continuous for the six years prior to 2014, due to the limited evidence and its lack of persuasiveness, we are not persuaded that Petitioner’s highly descriptive mark had acquired distinctiveness before 2014. [14] ”

     Acquired Distinctiveness

The USPTO states that under section 2(f) of the Lanham Act, an owner can submit actual evidence that because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. [15] Long-term use alone is generally not sufficient to show acquired distinctiveness for marks that are merely ornamental. Acceptable evidence of use and promotion can include [16] :

(a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;

(b) dollar figures for advertising devoted to such promotion;

(c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark;

(d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Any evidence, including “verified statements, depositions and other appropriate evidence,” that shows or speaks to the “duration, extent and nature of use” of the mark in commerce is fair game [17] . Advertising and marketing expenditures, consumer data, and media coverage may also be used to demonstrate that an applied-for mark has acquired distinctiveness [18] . Furthermore, the “ultimate test in determining whether a designation has acquired distinctiveness is the applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source [19] .” In other words, applicants must prove that consumers believe that the applied-for mark is an indicator of source, not the product or service itself. [20]

    Infringement Damages

Because an unregistered trademark can only be asserted in the geographic area where the owner operates, there is a likelihood that an unregistered trademark cannot recover equal damages as a registered trademark. Marks not registered with the USPTO may be protected at the state level by common law or statutes associated with unfair competition. [21] For a registered trademark, the remedies for infringement under the Lanham Act are statutory and consist of: injunctive relief; an accounting for profits; damages, including the possibility of treble damages when appropriate; attorney’s fees in “exceptional cases;” and costs. [22] These remedies are cumulative, meaning that a successful plaintiff may recover the defendant’s profits in addition to any damages, or other remedies awarded.

If a common law trademark owner does ultimately seek cancellation or opposition to registration of a trademark, it is imperative that the owner is able to show acquired distinctiveness or secondary meaning before asserting priority of ownership.

If you have any questions about this memo, please contact Christopher L. Rasmussen, Managing Partner, Inventus Law, PC., at [email protected] or 408-482-3216, or Linnea Vail, Commercial Associate, Inventus Law, PC., at [email protected] or 650-338-9391.

Disclaimer: The information on this page is being provided for information purposes only and is drafted entirely on the basis of public resources. Information contained on or made available herein is not intended to and does not constitute legal advice, recommendations, mediation or counseling under any circumstance. This information and your use thereof do not create an attorney-client relationship. You should not act or rely on any information provided herein without seeking the advice of a competent attorney licensed to practice in your jurisdiction for your particular business.

[1] See 15 U.S.C. §§ 1051 et seq., see also https://www.law.cornell.edu/wex/trademark

[2] See https://www.law.cornell.edu/wex/trademark

[3] See https://corsearch.com/knowledge-base/article/first-to-file-versus-first-to-use/

[4] See https://www.natlawreview.com/article/common-law-v-federally-registered-trademark-rights

[5] See https://www.natlawreview.com/article/common-law-v-federally-registered-trademark-rights

[7] Otto Roth Co. v. Universal Foods Corp ., 640 F.2d 1317, 1318 (C.C.P.A. 1981)

[8] Otto Roth Co. at 1319

[9] Otto Roth Co. at 1320

[11] Id . at 1322

[12] Id . at 1322

[13] https://www.mondaq.com/unitedstates/trademark/1218452/ttab-denies-cancellation-petition-for-failure-to-prove-acquired-distinctiveness-of-petitioner39s-common-law-marks

[15] https://www.uspto.gov/trademarks/laws/how-claim-acquired-distinctiveness-under-section-2f-0

[17] Yamaha Int’l Corp. v. Hoshino Gakki Co ., 840 F.2d 1572, 1583 (Fed. Cir. 1988)., see also https://www.altlegal.com/blog/what-the-2f-demonstrating-acquired-distinctiveness/

[19] TMEP §1212.06(b).

[20] See https://www.altlegal.com/blog/what-the-2f-demonstrating-acquired-distinctiveness/

[21] See https://www.justia.com/intellectual-property/trademarks/unregistered-trademarks/

[22] See 15 U.S.C. § 1117.

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Trademark Assignment: How to Transfer Trademark Ownership

Trademarks are valuable representations of the goodwill of your business that connects a specific product to your brand for your consumers. As your startup or business matures (or if you acquire a company) you will likely need a trademark assignment agreement. This is a type of agreement for transferring ownership that provides a variety of business benefits necessary for protecting purchased or transferred trademark rights.

Table of Contents

What Is Trademark Assignment?

A trademark assignment is the formal process for transferring the ownership of a trademark and the associated rights that ownership provides (e.g., use, licensure, further assignment, etc.). Often, a trademark assignment is part of a larger transaction such as an asset purchase agreement or a corporate reorganization.

When Is the Assignment of Trademark Procedure Necessary?

You will need an assignment of trademark any time you are transferring trademarks permanently. Such transfers can be within a larger corporate structure (e.g., from a parent company to a subsidiary), to a family member (e.g., via an estate administration), or to an outside party via sale.

For situations that don’t involve the owner of the trademark transferring to a new owner, you may consider a trademark licensing agreement. Unlike a trademark assignment, a license does not transfer ownership, and instead, gives the rights commonly associated with ownership. For example, you typically see trademark licensing in the context of franchise agreements, merchandising, endorsement deals, etc.

Here’s How to Transfer Trademark Ownership

The process for transferring a trademark via assignment may vary depending on the context of your situation. Relevant to determining the process will be the nature of the transaction along with the relationship between the assignee and assignor. Your checklist will also vary depending on if you are the buyer or seller of the trademark. That said, you will generally consider the following steps for a complete assignment:

• Due diligence
• Determine authority to transfer the trademark
• Execute trademark assignment agreement (What should be included in a trademark assignment form)
• Complete ancillary agreements necessary to give effect to trademark transfer
• Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership

1. Due Diligence

Not all trademarks are created equally because of their rights that exist in common law and through statutory law at the state and federal levels. As a result, it’s important to research the trademark status before taking possession. Primarily, you will want to search for its registration number with applicable state and federal agencies (i.e., the USPTO). Having a registered mark improves your ability to enforce against trademark infringement and protect its value after acquisition as part of the goodwill of the business.

2. Determine Authority to Transfer the Trademark

Another integral part of transferring a trademark through an assignment is verifying that the assignor has the authority to transfer the title to the assignee. Your Florida trademark lawyer will be able to help you verify that authority, but you will generally check in two ways. The first will be confirming ownership reflected on trademark registration documents recorded with the USPTO. However, you will also want to confirm that ownership and authority via the business entity organizational documents.

3. Execute Trademark Assignment Agreement

After completing proper due diligence, you will need to execute a trademark assignment agreement. The purpose of the agreement is to provide evidence of the transfer and to allocate rights and obligations among the assignor and assignee.

What Should Be Included in a Trademark Assignment Form?

The contents of your trademark assignment agreement will also depend on the nature of the transaction and the relationship between the original owner and the new owner of the mark. Typically, you will see the following elements with a trademark assignment form contract:

• Names of the parties and the agreement’s effective date
• Recitals explaining the circumstance for the trademark transfer (e.g., gift, reorganization, purchase asset agreement, etc.)
• Consideration for the intellectual property transfer (e.g., value exchanged such as cash, real estate, or other personal property
• Representations and warranties surrounding past use, current owner, etc.
• Indemnity surrounding past or future claims related to the use of the trademark
• Conflict resolution provisions (e.g., mediation, arbitration, governing law, choice of venue, etc.)

4. Complete Ancillary Agreements

As mentioned above, transferring ownership of the trademark is likely part of a larger transaction such as the sale of a company. This fact usually means you will need to complete other contracts and documents for the assignment to be enforceable. To name a few, such documents might include:

• Asset purchase agreement
• USPTO forms
• Assumption of liability agreement
• Intellectual property licensing agreements
• Corporate consent resolutions

5. Notify the USPTO of Change of Ownership

Part of a complete assignment of a trademark will require finishing the USPTO application process for a name change on the trademark registration. It’s important to notify the USPTO of the change in ownership and to update contact information for future correspondence related to your trademark. Additionally, maintaining accurate information with the USPTO for your registered trademark is necessary for protecting your trademark rights against infringement, dilution, and other legal issues.

What Are the Implications if a Trademark Transfer Is Not Done Properly?

Failing to properly transfer a trademark from one party to another can lead to exposure and create unnecessary risk. Most of the consequences stem from the fact that improper trademark transfers create confusion about who actually owns the mark. If uncertainty exists about proper ownership, it can make it more difficult to enforce your trademark rights and protect against future trademark infringement or track trademark infringement statute of limitations .

When it appears multiple parties have rights to a trademark, it can also create a risk of trademark dilution (i.e., its use becomes more in the public domain, weakening its proprietary value). As a final point, trademark transfers are usually part of a broader transaction, and failing to properly execute the assignment may jeopardize the success of the whole transaction or, at the least, substantially add to the closing costs.

As detailed above, a trademark assignment form should provide all of the information surrounding the transfer (e.g., party names, effective date, value transferred, warranties, etc.). Additionally, the assignment should provide for more general contract terms related to termination rights, conflict resolution methods, indemnities, and necessary cross-references with any simultaneously entered into agreements.

Need Help with a Trademark Assignment Agreement?

If you are in the process of buying, selling, or otherwise transferring a trademark, then a trademark assignment agreement will be a key document for establishing and protecting those trademark rights. The trademark attorneys at our firm help clients draft and negotiate these agreements along with related legal advice and services such as representations in front of the USPTO.

Contact Cueto Law Group today to properly transfer ownership of a trademark.

Trademark Assignment Template Sample

Below are a PDF and Word version of a trademark consent agreement template that you can review as a trademark assignment agreement sample. As a reminder, these are just sample forms and further modification is likely necessary to meet any particular assignment needs.

Key Takeaways on How to Transfer a Trademark

When transferring a trademark, two fundamentals will be essential for increasing the chances of a smooth transition. The first is having sound documentation and contracts (i.e., an assignment agreement) in place between the assignor and assignee. The second is confirming that all applications and registrations with the USPTO accurately reflect that new proprietorship.

Can You Use an Asset Purchase Agreement in Place of a Trademark Transfer Agreement?

Depending on the complexity of the sale, you may be able to incorporate a trademark assignment into an asset purchase agreement (APA) rather than using a separate trademark transfer agreement. Generally, APAs are much more complex documents, and an assignment agreement is a better vehicle for transferring titles.

How Do I Submit a Trademark Assignment to USPTO?

The USPTO has an Electronic Trademark Assignment System (ETAS) where you can submit and record the transfer of the trademark or simply update name change in ownership (e.g., if you recently married or divorced). Alternatively, you can submit the information via mail using a Recordation Form Cover Sheet.

Do Patent Assignments Need to Be Recorded?

Yes, recording a patent assignment with the USPTO is recommended and sometimes necessary for many of the same reasons why recording a trademark assignment is worthwhile. You can record a patent assignment through a similar USPTO system as you would for a trademark, known as the Electronic Patent Assignment System.

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Unregistered Trademark: Everything You Need to Know

An unregistered trademark is a logo, graphic, image, or word that has not been approved by the United States Patent and Trademark Office. 4 min read updated on January 01, 2024

What Is an Unregisted Trademark?

An unregistered trademark is a logo, graphic, image, or word that has not been approved by the United States Patent and Trademark Office. However, companies can use the trademark (TM) logo to show their company has use of a particular of a visual idea. Other businesses can use this logo without legal matters in some cases.

According to the Trademark Act, un registered trademark s are also defined as marks for businesses and goods that haven't been registered with the United States Patent and Trademark Office (USPTO). 

Why Are Unregistered Trademarks Important?

The biggest reason why unregistered trademarks are important is that they provide no protection in legal matters outside of local or state government. If you are using an unregistered trademark that represents your business in a small geographic location, you may be able to stop them. However, you cannot keep a party from stealing your brand or logo outside of that service area.

If you've already branded a trademark, your only option is a cease and desist order. If someone steals your logo, you still have legal recourse. You can take the infringer to court, but only if:

• You can prove the mark is a valid trademark.
• The infringer lives in another state.
• The amount in question is more than $75,000.

What makes an unregistered trademark valid is that you only have to prove you were the first to design. The date of the unregistered trademark's design is the deciding factor in litigation. In some cases, you can have your trademark limited by a smaller or larger company if you didn't display it first.

However, you can file a registration that's considered a "constructive use of mark(s)" giving you priority over anything resembling your symbol. In that case, you can file for a trademark. In the meantime, no one can steal your logo. 

The Lanham Act

Any word, name, symbol, or device is protected by law. However, it's the Lanham Act that offers more. Trademark infringement is based upon use. A plaintiff with an unregistered trademark can win a court case. They must prove:

• They had the first trademark in the market.
• The trademark is valid, registered or not.
• The other party wanted to confuse customers.

The Lanham Act was settled by the Popular Bank of Florida v. Banco Popular de Puerto Rico ruling. Under the Lanham Act, the other company must stop using your trademark, and you may also win restitution. 

Reasons to Consider Using an Unregistered Trademark

A business does not need to file for a registered trademark if it has no competitors. In this case, the state court is the only medium that can deny your logo. Otherwise, the burden of proof is on the plaintiff. It's important to note that an unregistered trademark doesn't receive any legal benefits except those provided under common law .

If you decide not to register your trademark, you can still get protection from the law, but only if you can prove that the mark is synonymous with the reputation and goodwill of a product, good, or service. If a company uses a rival unregistered trademark to sell their goods, this violates the common law tort of passing off. Passing off is where a person tries to profit off your reputation. However, proving passing off is the burden of the plaintiff.

Passing off can be successfully tried in court if the plaintiff proves:

• There's a similarity in trade names and marks
• The defendant is purposely using their name to sell goods.
• The defendant can easily confuse customers of average intelligence and imperfect recollection.

Reasons to Consider Getting a Trademark

If you are in a larger location or want to expand, a registered trademark is worth the trouble. A registered trademark owner can:

• Sue an infringer in federal court
• Define presumption of ownership
• Fight a court battle over a domain name
• Be allowed for use in interstate commerce, making it recognizable and preventing infringers from saying they were unaware of the trademark
• Add potential value
• Add intellectual rights
• Online sales
• Get uncontestability in court if the registered trademark goes unopposed for five years.
• Triple monetary damages and criminal prosecution for infringers

Even if you've never considered a trademark, it's a form of intellectual property that cannot be denied. In a larger market, it protects you from companies trying to infringe upon your hard work. However, the benefits outweigh any negative consequences making the trademark a sound business decision.

Frequently Asked Questions

• Should I register my business trademark?

Only if you feel like another company could steal your unregistered trademark to make money on their behalf. If there are no competitors in your market, it's not in your best interest monetarily. You should also check the database of the United States Patent and Trademark Office to see if your logo is similar to any others.

• If I register a trademark , is it legally binding?

If you must register a trademark, you have the legal right after filing. Even if you aren't granted a trademark immediately, no competitor can steal it. However, if you register and don't use the trademark, infringers can use this against you. 

• What's the Difference Between a Registered and Unregistered Trademark?

A registered trademark offers full protection from the law. An unregistered trademark is contestable. 

Steps to Apply

If you feel you may benefit from a registered trademark, you can do the work online . After the trademark is approved, you are permitted to use the (R) symbol, which indicates that your idea isn't up for grabs. You can also sue if someone tries to imitate. 

Many small business owners feel that they can't get protection with an unregistered trademark. However, with the Lanham Act and first right, owners may have the protection they need. If you aren't sure about your trademark status , you can post your legal need here and receive free custom proposals from the top 5% of lawyers.

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Unlocking Brand Value: Understanding Trademark Assignment in India

By -  King Stubb & Kasiva on  August 5, 2023

A Trademark Assignment is a legally binding document that grants permission to the registered proprietor of a trademark to transfer the ownership of the trademark and issue proper receipts for any consideration involved in the assignment. The assignor relinquishes their rights to a registered word, phrase, symbol, or design, transferring it to a new owner. When there is a transfer of the owner's power, title, and interest in the trademark, this process occurs.

In essence, Assignment and Transmission of Trademark is the procedure by which ownership of a trademark is transferred from one individual to another, entailing either full or partial rights, as specified in the terms and conditions set by the current trademark owner. Both with and without the goodwill of the associated business, registered and unregistered trademarks can be assigned and transmitted from one party to another. This assignment is facilitated through a trademark assignment agreement, which formalizes the transfer of ownership and rights.

In accordance with Section 37 of the Trade Marks Act, 1999, it is explicitly stated that the individual who is registered as the proprietor of a trademark in the register of trademarks holds the authority to assign the trademark to another person and also receive consideration (compensation or payment) for such assignment. Therefore, a trademark proprietor is legally allowed to transfer the ownership of the trademark to a different individual or entity.

Table of Contents

Types of trademark assignment.

The various types of trademark assignments are as follows:

• Complete Assignment: In a complete assignment, the trademark proprietor transfers all rights associated with the trademark to another person. This includes the right to use the trademark for any purpose, the ability to earn royalties from its use, and the right to further transfer the trademark to others. After the complete assignment, the original proprietor no longer retains any rights over the trademark.
• Partial Assignment: In a partial assignment, the trademark proprietor transfers only specific rights related to certain services or goods of the trademark. The transfer of ownership is limited to those particular services or products.
• Assignment with Goodwill of Business: When a trademark is assigned with goodwill, the proprietor transfers not just the trademark itself but also all the associated values, advantages, and reputation linked to that trademark. The assignee can utilize the trademark for any category of goods or services, including those that were already being used by the assignor.
• Assignment without the Goodwill of Business: In an assignment without goodwill, the trademark proprietor transfers rights to the assignee concerning goods or services that are not currently in use. The assignor restricts the transfer of rights regarding goods or services already in use by them. Essentially, the assignee cannot use the trademark for the products or services that were already in use by the assignor.

To initiate the trademark assignment process, follow these steps:

• Submit Application: The first step is to prepare an application for the assignment of the trademark. This application can be made by the assignee (the new owner), the assignor (current proprietor). The application should contain all the necessary details of the transfer under form TM-P, as specified in Rule 75 of Trademark Rules 2017. [1]
• File with Registrar : Once the application is complete, file it with the Registrar of Trademarks. It should be done within 3 months of obtaining proprietorship.
• Registrar's Direction (for assignments with goodwill or registered trademarks): where the trademark assignment involves goodwill or is of a registered trademark, obtaining a direction from the Registrar of Trademarks is mandatory. It must be obtained before the expiration of the 3-month period (can be extended if needed).
• Advertisement of Assignment: Upon receiving the Registrar's direction, the applicant must advertise the trademark assignment as specified by the Registrar. It should be done accordingly, and a copy of the advertisement, along with the Registrar's direction, must be submitted to the authorities.
• Transfer of Trademark: Once the Registrar is satisfied with all the documentation, the trademark will be officially transferred from the original owner to the new owner (assignee).
• Registration of New Proprietor: The name of the assignee, the new owner, will be registered in the trademark register as the new proprietor of the trademark. This formalizes the transfer of ownership.
• Usage of Trademark: the assignee (new owner) can use the trademark as per the terms and conditions specified in the agreement.

Benefits Of Trademark Assignment

• Trademark assignment allows the trademark proprietor to capitalize on the value of their brand.
• The assignee benefits from the trademark assignment by gaining the rights to an already established and recognized brand.
• For both the assignor and the assignee, trademark assignment can facilitate business expansion.
• Through a trademark assignment agreement, both the assignor and the assignee can establish their legal rights and obligations clearly.

Overall, trademark assignment provides a mutually beneficial arrangement for the trademark proprietor and the recipient, allowing them to leverage the value of the brand, expand their businesses, and establish a clear legal framework for the assignment.

Can an unregistered trademark be assigned?

Yes, the assignment of an unregistered trademark can be carried out with or without the goodwill of the business associated with the trademark. To proceed a request must be made on Form TM-16, which is the prescribed form for such assignments.

Can an Individual assign a Trademark?

Certainly, a registered trademark can be assigned by an individual.

Why it’s necessary to obtain a Trademark Assignment Agreement in India?

A Trademark Assignment Agreement serves as a legal mechanism to transfer ownership of a trademark or service mark when required. It plays a pivotal role when a product or company is being bought or sold by another individual or entity.

[1] https://www.ipindia.gov.in/TM-Rules-2017.htm

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Assignment of Trademark

Lasya Pamidi

Assignment of trademark is when there is a transfer of the owner’s right, title and interest of the trademark. Such transfers can take place in the form of an assignment or merger or also an amalgamation between two entities.

Trademark Assignment is the process of transferring ownership of the trademark either with or without the goodwill of the business. One can assign a trademark through a trademark assignment agreement. The original owner of the trademark is “the assignor” and the future owner is “the Assignee.”

Benefits of Trademark Assignment

• Trademark’s value – Creating a brand name for a company involves money, time and capital. An assignor is able to encash the brand value. The Assignee is also able to unlock benefits of the brand name in the Industry.
• Exercise Legal Rights – The trademark assignment agreement secures the legal right of the assignee incase of a dispute. The Registry ensures the validity of all the clauses mentioned in the agreement before publishing the assignment in the Trade Marks Journal.
• Existing brand name – The assignee has the advantage of dealing in an already existing and established a brand name.
• Business Expansion – The Brand value will propel with the combined efforts of assignor and assignee to contribute in brand building.

Types of Trademark Assignment or Transfer

• The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc.
• The owner transfers trademark restricted to specific products or services only.
• Such assignment is when the rights and value of a trademark as associated with the product is also transferred to another entity.
• Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use the brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer.

Documents Required

• TM Certificate : Certificate of Trademark Registration (if any)
• Details of the Party: Name and description of the assignor and assignee
• NOC : No Objection Certificate from the original owner of the registered trademark

Process for Assignment of Trademark

• The assignor or assignee or both can make a joint request to register assignee as a subsequent proprietor by an application of a trademark assignment. The application is made under Form TM-P.
• Assignee must apply with the registrar of a trademark within six months from the date of procurement of the proprietorship. Some applications can filed after six months of procurement but the fee payable will vary. You can also find the amounts payable for the corresponding forms  here .
• The Registrar will specify the advertisement of the trademark assignment. After which the applicant has to make the advertisement accordingly. A copy of the direction of the registrar and advertisement of the assignment must be submitted to the office to make sure that the directions have been followed.
• On the receipt of the trademark assignment application and documents required, the registrar after perceiving satisfied shall register the assignee as the proprietor of the trademark. The registrar records the specifications of the assignment in the register.

Yes, you can assign an unregistered trademark by filing an application.

The Trademark Registry in India normally takes up to 6 to 8 months to update the data of the transfer.

A registry has prescribed Rs 9,000/- as a fee payable for application of transfer Trademark ownership i.e. Trademark Assignment in India.

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Hey @Dia_malhotra , Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce.

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Assignment of Trademark Without Goodwill of Business

The term ‘ trademark assignment’ refers to the transfer of a trademark from one person to another. In simpler terms, it involves the movement of benefits, interests, rights, and titles related to the trademark. This transfer essentially entails passing the ownership benefits, rights, title, and interests from the original owner to another individual. The person who transfers the trademark is known as the ‘Assignor,’ while the individual receiving it is termed the ‘Assignee.’ In this blog, we shall see the assignment of trademark without goodwill of business in India.

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Significance of Trademark Assignment

Assignment of trademark with goodwill or assignment of trademark without goodwill is a crucial aspect of intellectual property law, specifically governed by the Trade Marks Act, 1999 in India. Understanding the power and applicability of trademark assignment is essential for individuals and businesses seeking to transfer or acquire trademark rights.

Assignment Under U/s 37 of the Trade Marks Act, 1999

Section 37 of the Trade Marks Act, 1999 , delineates the authority vested in the registered owner of a trademark. This section is paramount in determining the ability to assign a trademark and the ensuing legal implications. According to this provision, the individual registered as the owner of the trademark in the trademarks register holds the exclusive power to assign the trademark. The assignment, when carried out correctly, results in the effective transfer of trademark rights and responsibilities.

Assignability of Registered and Unregistered Trademarks

Two distinct scenarios arise in the assignment of trademark registration , each governed by specific sections within the Trade Marks Act, 1999:

1. Assignment of Registered Trademarks (U/s 38)

Under Section 38 of the Trade Marks Act, 1999 , the assignment of a registered trademark is permitted. This assignment can occur with or without the transfer of business goodwill. This flexibility offers trademark owners various options when assigning their registered trademarks, facilitating strategic business decisions.

2. Assignment of Unregistered Trademarks (U/s 39)

Section 39 of the Trade Marks Act, 1999 deals with the assignment of unregistered trademarks. Unlike registered trademarks, unregistered trademarks can also be assigned, whether with the goodwill of the business or assignment of trademark without goodwill of the business.

Types of Trademark Assignment

Trademark assignments can be categorised into two main types, each with distinct implications for the assignor and assignee. Understanding these two types is essential for those involved in trademark transactions.

1. Assignment of the Trademark with Business Goodwill

When a trademark is assigned along with business goodwill, it involves not just the transfer of the trademark itself but also the associated rights, values, and entitlements linked to that trademark concerning specific goods and/or services. In this scenario, the assignor passes on the trademark and its goodwill to the assignee.

2. Assignment of Trademark without Goodwill of Business

In contrast, in assignment of trademark without goodwill, the assignor transfers the trademark to the assignee with entitlements and rights limited to goods and/or services that the assignor is not utilising under that trademark. This assignment of trademark without goodwill prohibits the assignee from using the trademark in connection with goods and/or services that the assignor continues to use under the same trademark.

Procedure for Assignment of Trademark without Goodwill

Assignment of trademark without goodwill involves specific steps and forms to be filed based on the trademark’s registration status. The procedure differs for pending and registered trademarks:

For Pending Trademarks (Not Registered Yet):

1. Fill out Form TM-M: Start by completing Form TM-M , which is the application for assignment of a pending (unregistered) trademark.

2. Submit Statutory Fees: When filing offline, you must submit the statutory fees of Rs.1,000. In the case of online filing, the fees are Rs.900.

For Registered Trademarks:

1. Fill out Form TM-P: If the trademark is already registered, use Form TM-P to apply for the assignment without goodwill.

2. Submit Statutory Fees: When filing offline, the statutory fees are Rs.10,000 , and for online filing, the fees amount to Rs.9,000.

File Form TM-P with Preliminary Fees: Initially, file Form TM-P along with preliminary fees of Rs.3,000 for offline filing or Rs.2,700 for online filing. This should be done within six months from the assignment date or within the three months extended period. This step is crucial for obtaining directions from the registrar regarding the ‘advertisement of assignment of trademark without goodwill.’

File TM-M or TM-P, as Required: After receiving the necessary directions, you will need to file either Form TM-M or Form TM-P based on the specific requirements of your assignment. The choice between these forms will depend on whether the assignment involves a pending or registered trademark.

Process of Trademark Assignment Registration

The process of registering a trademark assignment involves several steps governed by the relevant provisions of the law. Mentioned below is a comprehensive overview of the procedure for registering a trademark assignment:

1. Application for Registration (U/s 45):

The subsequent proprietor/assignee of a trademark, who has acquired entitlement through assignment, must apply to the Registrar of Trademarks for the registration of the assignment.

2. Registrar’s Evaluation (U/s 45):

Under Section 45, once the Registrar is fully satisfied with the application, the assignee’s details will be officially recorded by the Registrar as the new proprietor of the trademark, specifically for the goods and/or services covered by the assignment.

3. Disputes Regarding Assignment Validity (U/s 45):

If disputes arise between the involved parties regarding the validity of the assignment, the Registrar has the authority to withhold registration of the assignment until a competent court resolves the conflicting rights of the parties.

4. Timely Disposal of Application (Trade Marks Rules, 2017 – Rule 76):

The Registrar is required to process and dispose of the application for assignment registration within three months from the date of its receipt. This rule ensures a timely and efficient handling of trademark assignment applications.

5. Verification of Documents (Trade Marks Rules, 2017 – Rule 77):

In cases where doubts exist regarding the authenticity of the documents or statements submitted, the Registrar may request the applicant, who seeks registration as a registered trademark proprietor, to provide additional evidence or proof of title.

6. Proper Stamp Duty (Trade Marks Rules, 2017 – Rule 78):

In the event that the Registrar finds any document provided to establish a person’s title is inadequately or improperly stamped, the Registrar reserves the right to take appropriate actions as per Chapter IV of the Indian Stamp Act, 1899 , to rectify the matter.

Once the assignment registration is approved by the Registrar, the following information will be documented in the register:

• Assignee’s name
• Assignee’s address
• Assignment date
• Description of the assigned rights, if the assignment pertains to specific rights
• Basis of the assignment
• Date of the register entry

This process ensures the proper transfer of trademark rights from the assignor to the assignee and provides clarity in the ownership of the trademark for specific goods and services. It also offers a mechanism for dispute resolution if there are disagreements concerning the assignment’s validity.

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Final thoughts.

The assignment of trademark without goodwill of a business is a careful legal process that separates the rights to a trademark from the business reputation and customer loyalty it may carry. This separation allows for the distinct transfer of trademark rights for specific goods or services, while the assignor retains the goodwill attached to the trademark. The procedure involves filing the requisite forms and paying statutory fees as per the Trade Marks Act. Additionally, the assignment of trademark without goodwill must be registered with the Registrar of Trademarks, ensuring clarity and legal recognition of the transfer. This practice offers flexibility in trademark transactions, allowing businesses and individuals to strategically manage their intellectual property rights while preserving the goodwill built around the brand in their respective sectors.

Aishwarya Agrawal

Ms. Aishwarya Agrawal is a graduate from Hidayatuallah National Law University, Raipur [HNLU Raipur]. Aishwarya holds a great interest in adding value to the legal fin-tech sector. She joined "StartupFino" with a motive to help budding lawyers in their day-to-day journey in the field of Law.

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Why Does a Trademark Assignment Need to Be Notarised?

Updated on : Oct 12th, 2021

Trademark is an intellectual property of a business and constitutes any design, words, or expressions that are unique to a business and makes it identifiable to the business. The trademark is registered by the business and all the rights of usage lie with the business.

What is a Trademark Assignment?

The trademark can be transferred to a third party either by license or assignment. The assignment of the trademark is the transfer of an owner’s right, title, and interest in a trademark or service mark. The assignment of the trademark is transferring the ownership, unlike licensing, which is only the permission to use the trademark. The one who assigns the trademark is the assignor, and the one who it is assigned to is the assignee.

The reason for an assignment can be that the maintenance of the intellectual property in terms of maintaining registrations, defending third party claims, and creating and marketing the trademark can be very draining for the company’s resources. So the business decides to sell off that is to assign the trademark and monetize the intellectual property. It could be a standalone sell-off or as a part of the sale of tangible and intangible assets of the business.

Why Notarising a Trademark Assignment is Important?

The notarisation of the assignment is in the benefit of the assignee. Also, notarising is important so that it is established that there is no possibility of wilful document fraud relating to the assignment. And so the assignment must be notarised on the right stamp duty. Further, the assignor must also submit an affidavit which is notarised mentioning that the trademark is truly theirs.

Types of Trademark Assignment

There are four types of trademark assignments:

• Complete Assignment: The assignment of all rights with respect to the right to sell, earn royalties relating to the trademark to the proprietor, is called a complete assignment. Also, complete assignment refers to the assignment of trademarks pertaining to all goods and services.
• Partial Assignment: The assignment of trademarks pertaining only to certain goods and services is termed as a partial assignment. A business having multiple goods and services can choose to assign only a certain product or service and retain the rest. This is a partial assignment.
• With Goodwill: Goodwill of a business is the brand value of the business. When the assignment of the trademark is with goodwill, the proprietor gets to use the brand value of the trademark as well. The proprietor can use the trademark for the same line of business. For example, Mr. X sells the trademark of his electrical appliances business named ‘Mony’ to Mr. Y. Mr. Y can take over the trademark and the brand value and continue the same business. Here Mr. Y earns the trust of the consumers of Mr. X as the consumers attach quality to a particular brand.
• Without Goodwill: The assignment is done only for the trademark and not the associated brand value. The proprietor must use the trademark for another line of business. Taking the same example as above if Mr. X sells the trademark without goodwill, Mr. Y cannot use the brand name ‘Mony’ for the same line of business, that is electrical business.

Elements of a Valid Trademark Assignment

The elements that are mostly required for the assignment to be valid are as follows:

• The assignment must be in writing; it must be a valid legal agreement.
• It must recognise the parties to the assignment that is “assignor” and “assignee”.
• It must identify the trademark(s) to be assigned and its relevant registrations.
• It must also identify the goods and services to be assigned.
• It must have the date of the assignment.
• It must also mention the consideration for the assignment.
• Warranties regarding the trademark.
• It must have signatures of both the assignee and assignor.
• It must be notarised.

Procedure to Record a Trademark Assignment With the Registrar

The trademarks can be registered trademark or unregistered trademark. The process for recording the assignment of the two types is as follows:

• Registered Trademark: Section 38 of the Trade Marks Act, 1999, stipulates that the trademarks can be assigned in full or in part, with or without the goodwill of the business. For a registered trademark, the assignment must be registered with the Registrar of Trademarks on Form 23 or Form 24 of the Trade Marks Act, 1999 (read with Rule 68 of the Trademarks Rules 2002).
• Unregistered Trademark: Section 39 of the Trade Marks Act, 1999, stipulates that the trademarks can be allocated with or without the goodwill of the business. The request has to be made in Form TM -16 for an unregistered trademark to be assigned.

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Assignment and Transmission of Trademark

• Intellectual Property Rights Subject-wise Law Notes
• Aishwarya Agrawal
• May 23, 2023

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment. 

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

• Restriction on assignment or transmission that would create multiple exclusive rights.
• Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

• Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
• The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
• If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
• In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties. 

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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Assignment of Trademark

GENERAL UNDERSTANDING:

As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.

Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.

STATUTORY DEFINITION:

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;

WHO CAN ASSIGN A TRADEMARK:

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.

Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.

  TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr.  X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.

In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.

2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.

In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)  

PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

REGISTRATION OF ASSIGNMENT OF TRADEMARK:

1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)

2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)

3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)

4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )

5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)

6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)

7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-

a) the name and address of the assignee;

b) the date of assignment;

c) where the assignment is in respect of any right in the trademark, a description of the right assigned;

d) the basis under which the assignment is made; and

e) the date on which the entry is made in the register.

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.

In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:

“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.

The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.

In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:

“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”

The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;

√  Registered or unregistered both type of marks can be assigned;

√  Assignment can be with or without the goodwill of the business;

√  Event of assignment asserts the rights and title in an assignee not the registration thereof;

√  Registration of assignment is only prima facie proof of title of trademark;

√  Rights in an assignee exists even before registration of assignment of trademark.

Conclusion: –

Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.

Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.

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Latest posts.

ITAT upholds disallowance of Expense against rental/Interest income & Partnership Firm Profit Share

Madras HC Sets Aside Order: GSTR 3B & 2A Discrepancy Disputed

Unreceived GST ASMT 10/DRC-01: HC Grants Petitioner Opportunity  

GSTR-1 Turnover Reporting Error Case: HC Grants  opportunity to petitioner 

Interest on compensation taxable as income from other sources: Delhi HC

GST registration cannot be cancelled retrospectively for non-filing of return for some period

Stamp duty valuation on Allotment letter date should be considered for Section 56(2)(x)

HC set-aside GST Registration cancellation SCN/Order for lacking reason for retrospective cancellation

HC Quashes GST order for Failure to Seek Further Details from Petitioner 

Alleged Misuse: Madras HC orders disposal of GST registration revocation application

Featured posts.

For Tax Filing – Analyze the Old and New Tax Regime

Auto-populate HSN-wise summary from e-Invoices into Table 12 of GSTR-1

CBDT mandates electronic filing of 8 income tax forms starting April 1, 2024

Advisory on Reset and Re-filing of GSTR-3B of some taxpayers

CBDT Clarifies on Misleading Reports on HRA Claims

Financial Year end GST Checkpoints

Representation on Incorrect/Delay In Submitting Application U/S 12A(1)(ac)

Statutory and Tax Compliance Calendar for April 2024

TDS Deduction under Old vs New Tax Regime & Budget 2023 Impact

Functionalities to file commonly used ITRs enabled by CBDT on 1st April, 2024