Trademark Sale and Purchase Agreement

Other terms and conditions used in securities purchase agreements can be found here. In addition to words, phrases, or logos, a trademark may also include a slogan, name, fragrance, the shape of a product or container, and a distinctive combination of musical notes. For example, even a color can be a trademark if it acts only as a symbol, according to the U.S. Supreme Court`s 1995 case of Qualitex Co. v. Jacobson Products Co., Inc. The role of the lawyer in drafting and negotiating the purchase agreement is (a) to identify the assets transferred from the seller to the buyer, and (b) the assets that remain with the seller. This due diligence also includes the processing of various intellectual property and IT provisions, including but not limited to: The following provisions regarding the transfer of domain names must be included in the intellectual property purchase agreement: The intersection of domain names and trademark law is often included in the purchase agreement. This document describes the terms, including the closing date and method of payment, for the sale of assets. A contract for the purchase of intellectual property assets identifies a seller`s intellectual property rights and the related assets and liabilities that a buyer acquires and assumes when a buyer takes possession of the seller`s separate business, such as . B as a product line, subsidiary or unregistered service. The agreement often describes certain intellectual property rights and services, including COMPUTER services, that the buyer shares with the seller and its affiliates.

Attachments to the acquisition agreement should include an electronic confirmation of the domain name transfer from the relevant registry and an assignment agreement. A trademark assignment contract is often used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often necessary when a product or business is sold or bought by another person or organization. If the trademark is federally registered, be sure to register the change of ownership with the USPTO`s Assignment Registration Directorate. A fee of $40 is required to enter an assignment based on the USPTO fee schedule. The cover sheet of the USPTO Trademark Registration Form is highly recommended when filing your trademark. Additional answers to other questions about registering a trademark transfer with the USPTO can be found in the Transfer of Ownership/Assignment FAQ. An example of an asset purchase contract can be found here. The purchase of intellectual property assets is different from the purchase of shares and merger transactions. The buyer must ensure that it receives either ownership of the intellectual property rights or the right to continue to use the rights contained in the assets acquired through a contract of assignment. This includes any additional intellectual property rights necessary for the use of these acquired assets. If the buyer acquires trademark rights through a sale of assets, it is not uncommon for the transfer agreement to waive the express mention of the trademark or other proprietary rights.

The intention to transfer trademarks with goodwill is presumed when a business is sold as a current company, so it is generally not explicitly delineated. Unless the transaction is between a parent company and its wholly-owned subsidiary. In this type of transaction, intellectual property rights are not automatically included. Ownership of the intellectual property remains the property of the parent company, unless the agreement expressly provides for a transfer to the subsidiary. Just because a brand can`t be physically held doesn`t mean the brand doesn`t have physical value. Forbes valued Google`s brand at $44.3 billion, while the Microsoft brand was just behind it at $42.8 billion. Capturing a command correctly allows you to clarify who owns the value mark. And while the parties have therefore proposed to conclude this agreement in order to modify the conditions agreed between the parties for this transaction in the following way. Although immaterial, a brand is a valuable asset because customers immediately associate certain qualities with a recognized brand. A trademark assignment agreement allows the owner to properly transfer customers from one company to another party. An intellectual property purchase agreement identifies a seller`s intellectual property rights and associated assets and liabilities.

Read 3 min Learn more about whether you need to register your trademark with the USPTO Basics about trademarks. .