Assignment or licence?
- Assignment transfers ownership. In the US the goodwill of the business must go with it — a bare transfer of the name can be invalid.
- Licence lets someone use the mark while you keep it. Exclusive or non-exclusive, by territory, product and time.
Record the change
Record assignments with each office where the mark is registered — at the USPTO through its Assignment Center, and at WIPO for international registrations (CHF 177 for a total or partial transfer). An unrecorded owner can face problems enforcing the mark, renewing it or joining Amazon Brand Registry.
What a licence should cover
- Quality control — the owner must be able to control the quality of goods sold under the mark, or rights can be weakened.
- Territory, products, term and royalties.
- Who enforces against infringers.
- What happens on termination — stock, domains, social accounts.
Common mistakes
- The founder owns the trademark personally while the company sells the products.
- A distributor registered the brand in its own name abroad.
- Assignments signed but never recorded.
A typical request on TrademarksHub
Example
“A founder registered the brand personally and now needs it assigned to the company in the US, UK and EU, recorded everywhere, before an investment closes.”
Illustrative example. On TrademarksHub requests are shown as “Private brand owner”, and only firms that cover the chosen countries can reply.Questions
How do I transfer a trademark to my company?
Sign an assignment (with the goodwill of the business) and record it with each trademark office where the mark is registered.
Does a licence need to be recorded?
Some countries require or recommend it; others don’t. A firm will check each country.
What does WIPO charge to record a new owner?
CHF 177 for a total or partial transfer of an international registration.