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Posted on August 7, 2021
How to Sell a Trademark Name in India?
Trademarks are a symbol of the identity of your business. The original names, phrases, symbols, logos, and designs that you create for your business help to identify your products and services. Consumers will be able to distinguish your offerings from that of competing businesses largely thanks to memorable trademarks.
The owner of any trademark can sell it to any individual or legal entity through the process of trademark assignment. By doing so, the owner can assign the right of his trademark to the individual or entity.
If you’ve built a successful business, one of the most valuable assets you have is your name. You can trademark your company’s name as long as it has not been trademarked by someone else. Once you have trademarked your company’s name, you can sell or transfer your trademark at any time. You will have to find a buyer and arrange a price yourself. Once you have a buyer, selling your trademark requires you to file paperwork with the U.S. Patent and Trademark Office.
Unlike patents, trademarks are associated with a product or a business and are not sold outright. Trademark ownership can be transferred along with ownership of the business or product the trademark represents. For example, if you sell your business, you may sell the trademark rights to the logo along with it.
The transmission or assignment of the trademark can be done with or without transferring the goodwill of the business. A trademark can be transferred in total or partially in terms of the goods and services it is associated with. However, before initiating a partial transfer, it is important to note that a partial transfer may result in confusion between the owners of the same mark for different goods and services.
Different Types of Trademarks
- Descriptive Trademarks;
- Merely Descriptive Trademarks;
- Generic Trademarks;
How do you transfer ownership of a trademark?
Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered
A federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed.
- Assignor/Owner of Trademark must have the intention and consent for Trademark Assignment.
- Assignment of trademark must be in writing.
- There must be two identifying parties – Assignor and Assignee.
- Valid Identified documents of both Assignor and Assignee.
- Execution of valid Trademark Assignment Agreement.
Step 1: Identify potential customers. If your trademark name is part of a successful business, you might already have a customer in mind. When you sell your business, you will likely transfer the name also. You can also put your trademark up for sale on websites that specialize in selling or auctioning off trademarks, such as the U.S. Trademark Exchange. These sites will feature your trademark for a couple of months to a year, and will charge a flat fee. Your trademark name will be listed along with your asking price. Clients browse the list of names and will be put in touch with you directly if they want to buy your name. Payment is arranged between you and the client.
Step 2: Apply to transfer your trademark name to a new owner. You can apply to transfer your trademark online at the USPTO website. Go to the home page of the website and click on the Trademark Electronic Application System button under tools. On the TEAS page, select “Assignment Forms,” which is listed ninth. This will take you to an online application to assign your trademark to someone else. You will fill out your name, the name and contact information of the person or company to whom you are transferring the application, your trademark registration number, and a short description of the trademark.
Step 3: Submit the application fee, which was $100 in 2012. You can pay by credit card, debit card or electronic funds transfer.
Process of assignment or transfer of trademark
Every registered trademark is assignable and transmissible. It can take one of the following forms –
- The transmission or assignment of the trademark can be done with or without transferring the goodwill of the business. For example, Tata taking over the trademark of Jaguar’s business in India. This means that Tata would also take over the goodwill of the brand entirely in the automobile business.
- The assignment can also be done for either some or all of the goods or services for which the trademark has been assigned. For example, a cement company having multiple other businesses like construction, quarrying, and interior designing, assigning the trademark of its construction business only.
- Once this agreement is signed by both parties, you can record the transfer with the USPTO using a simple online form. You will also need to send in a copy of the executed transfer agreement. With online filing, the transfer is typically processed within one business day.
Create a legally binding agreement between your company and the buyer. List the names, addresses and telephone numbers of all individuals and companies involved with the transaction. If the trademark has multiple owners, all of them must sign the assignment agreement. List the pertinent financial details of the transaction, including the sale price and the party responsible for paying the transfer fees. Include a provision discussing the method of resolving disputes over the trademark sale, such as mediation or arbitration.
Visit the USPTO website to submit your assignment application electronically. You can also print out the necessary forms and mail in your application. Navigate to the electronic application system and select “Assignment Forms.” Complete the application according to the instructions. You must list the trademark registration number, a description of the mark and the contact information for both the buyer and seller. Pay the applicable filing fee with a credit card, debit card or electronic check.