Like other forms of intellectual property, trademarks can be bought and sold. However, buying or selling a trademark is much more complex than transferring physical property. It’s crucial to understand the steps that are necessary to take to transfer the trademark between parties — and the ramifications selling your mark can have for your business endeavors.
Should You Sell Your Trademark?
A trademark can be sold as long as it is currently being used in commerce. It should be noted that it is not always possible to sell a trademark that falls under an “intent to use” application. The United States Patent and Trademark Office (USPTO) has strict requirements concerning evidence of use and expects applicants to file a Statement of Use within six months. Before selling a trademark, you should consider a variety of factors, including the following:
The current state of the economy
Market demand for the goods and services
Your future objectives for the product offerings
When you sell a trademark to another, you make a one-time profit. But it’s essential to be aware that when you transfer your mark, you can also lose the identity your company worked so hard to build. Critically, selling your trademark can bar you from benefiting from the brand’s growth in the future. Depending upon your specific situation and business goals, it may be best to consider a licensing or usage agreement.
How to Sell a Trademark
If you’re selling a business, you might have to sell your intellectual property along with it, depending upon the terms you have negotiated with the buyer. A legally binding assignment agreement should be drafted specifying the terms of the transfer. If the trademark has multiple owners, each will need to agree to the assignment. The assignment agreement should also list the relevant details regarding the transaction, including the sale price and which party is responsible for paying the fees associated with the transfer. It’s also best to specify a dispute resolution method in the event a conflict concerning the trademark sale arises — such as arbitration or mediation. In addition, the USPTO must be advised of the trademark assignment. An assignment form must be submitted to the USPTO listing details such as the trademark registration number, a description of the trademark, and the contact information for the seller and the buyer. This can be done with a paper submission or through the Electronic Trademark Assignment System (ETAS). Within seven days of the electronic submission, you will receive an official Notice of Recordation/Non-recordation. If the USPTO finds an error on the document transferring ownership, you may be contacted to correct it in order for the filing to be recorded.
Licensing a Trademark as an Alternative to Selling
If you are thinking about selling your trademark, it’s important to understand that the price at which you sell it isn’t necessarily its permanent value. As a brand gains confidence among its consumer base and a company grows, the value of its intellectual property may increase. Licensing a trademark can allow you to maintain your ownership rights and benefit from future sales of the goods or services connected with the mark. In contrast with selling a trademark, where you forgo the right to future profits generated from it, licensing allows the trademark owner to receive royalties from the licensee’s use of the mark. There are various types of licensing agreements that can be entered into, based on the objectives of both parties. While an exclusive license gives the licensee sole commercial trademark rights, a sole license prohibits the trademark owner from licensing to a third party. A licensing agreement can also be non-exclusive, allowing the mark to be licensed by outside individuals. When a trademark is licensed, the mark’s owner is responsible for ensuring the goods or services meet the standards that are expected of the mark. This includes monitoring the mark for infringement and ensuring the quality of the products that carry the mark. Failure to monitor the mark can result in it being deemed abandoned. In such cases, an owner can no longer claim any rights to the mark and other parties may use it without any legal consequences or recourse from the owner.
Contact an Experienced Trademark Attorney
Buying, selling, or licensing a trademark can be complex. It’s essential to have a skilled trademark attorney by your side to ensure your interests are protected. At the Trademark Lawyer Law Firm, PLLC, we are dedicated to providing knowledgeable counsel regarding trademark matters and helping our clients achieve their business goals. Located in Ann Arbor, Michigan, our attorneys work with entrepreneurs and business owners throughout the country. Contact us today to schedule a free 15-minute consultation.
Common Questions About The Differences Between Trademarks, Copyrights, And Patents
As we create a product, service, or piece of original work, one of the first things we need to consider is how to protect it legally. Intellectual property law offers several options, but knowing the difference between trademarks, copyrights, and patents is key to choosing the right one. Each type of protection serves a different purpose and applies to different kinds of creative and commercial assets. Making the wrong choice or skipping protection altogether can expose our ideas to misuse. Speaking with our trademark lawyers, who have successfully registered over 7,000 patents, early in the process can help you move in the right direction.
What Is The Legal Definition Of A Trademark, And How Is It Different From A Copyright Or Patent?
A trademark protects a word, phrase, symbol, or design that identifies and distinguishes the source of goods or services. It’s different from a copyright, which protects original works of authorship such as books, music, or films. A patent, by contrast, protects new inventions or processes. While trademarks are tied to branding, copyrights relate to creative expression, and patents focus on functionality and invention. Each form of protection plays a different legal role in securing value.
What Types Of Intellectual Property Are Protected By Trademarks, And How Long Does That Protection Last?
Our intellectual property lawyer can share that trademarks protect brand names, slogans, logos, and sometimes distinctive packaging, known as trade dress. These protections are meant to help consumers identify and trust the source of a product or service. As long as the mark continues to be used in commerce and properly maintained, the protection can potentially last indefinitely. However, the trademark must be renewed periodically, and failure to file the necessary maintenance documents can result in loss of protection.
Can A Single Product Have Both A Trademark And A Copyright?
Yes, a product may qualify for both types of protection, depending on which parts of it meet the legal requirements. For example, our trademark rights attorney will share that a board game might be covered by copyright for the game rules and artwork, while the game’s name and logo could be protected by trademark. The same concept applies to branded content—logos, taglines, or packaging might qualify for trademark registration, while written materials or music are covered by copyright. When multiple forms of intellectual property apply, they often work together to offer broader legal coverage.
How Do I Know Whether I Need A Trademark, A Copyright, Or A Patent To Protect My Idea?
It depends on what aspect of your work or business you want to protect. If you’re developing a brand or product identity—such as a logo, name, or slogan—a trademark is likely the best route. If you’ve created an original written, visual, or musical work, copyright applies. And if you’ve invented something with a new function, a patent may be necessary. It’s common for businesses to use all three types of protection in different areas. Consulting with a trademark lawyer can clarify which approach fits best with your goals.
What Are The Legal Requirements For Registering A Trademark Compared To Getting A Copyright Or Filing A Patent?
Trademark registration requires proof that the mark is used in commerce or will be used soon. The application must show that the mark is distinctive and not confusingly similar to an existing one. In contrast, copyright protection is automatic upon creation of a qualifying work, but registration provides added benefits such as legal enforcement, which a trademark attorney can help with. Patent registration is the most demanding, requiring detailed technical specifications and review by a patent examiner. Each process has its own timeline, costs, and filing criteria.
Choosing The Right Type Of Protection For Your Work
Figuring out whether to file a trademark, copyright, or patent can be challenging, especially when a product includes different elements that may qualify for multiple types of protection. You can benefit from understanding how these protections overlap—and when they don’t. Our team can walk you through the right steps, and intellectual property attorneys like those at Trademark Lawyer Law Firm can help take action that aligns with your business or creative goals. Call today, we offer 24/7 live call answering.
"I have dealt with Trademark Lawyer Law Firm, PLLC, for several years. This time I needed to have my trademark renewed within a week as a deadline was approaching. As always, they prepared the paperwork professionally and in an expedited manner. Our communication to confirm details was smooth and quick. In a matter of days, they submitted the trademark renewal request. The service of this group of professionals is excellent." O. Garcia
Trademark Lawyer Law Firm
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Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
What are Disclaimers for Trademarks?
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.
What is the Supplemental Registry?
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
What is the Date of First Use?
Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
What is the Renewal Timeframe for a Trademark?
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
Meet Your Team
J.J. Lee
Principal and Founder
Erin C. Bray
Trademark Attorney
Experienced Trademark Attorneys Committed to Protecting Your Brand
Founded by J.J. Lee, the Trademark Lawyer Law Firm, PLLC has successfully registered more than 6,500 trademarks with the USPTO. Dedicated to ensuring that your mark is protected from misuse or theft, our attorneys and staff work closely with clients, taking the time to understand the specific needs of their businesses. Professionally handling each matter with integrity, efficiency, and the personalized attention it deserves, you can rest assured that you have a team on your side who is committed to safeguarding your unique brand.
