FAQ for trademark assignment
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Can an unregistered trademark be assigned? |
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A submitted trademark application which has not yet been approved for registration could be assigned, but an unregistered trademark may be rejected by the Trademark Office due to lack of distinctiveness, infringement of prior rights or other reasons. Under such circumstances, the assignee will bear the risk of rejection of the unregistered trademark. |
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What are the advantages of trademark assignment compared with trademark registration? |
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What issues should be paid attention in the process of trademark assignment? |
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Should the trademark still be used on the goods/services designated by the original trademark after assignment? |
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Yes, the exclusive right to use a registered trademark is limited to the goods/services approved for use. Before the assignment, you should find out whether the trademark owner is assigning the trademark beyond its approved use range, and also check whether the business scope you need to use the trademark is consistent with the goods/service items specified by the assignor’s trademark registration, so as not to cause trademark infringement and unavailability problem. |
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Are there any provisions provide that trademarks shall be assigned for free or with payment? |
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Trademarks can be assigned for free or with payment. The registrant has the exclusive right to assign its registered trademark for free or with payment by signing a trademark assignment contract. For the paid assignment, the assignor and the assignee should sign a trademark assignment agreement. For the free assignment, two methods can be adopted: one is to sign a free assignment agreement, and the other is to sign a gift contract to give the trademark as intangible property to the assignee. However, regardless of whether it is free or paid, both parties should still go through the trademark assignment procedures with the Trademark Office. After the Trademark Office has approved the assignment, it will have legal effect and the assignment of trademark rights will be realized. |
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Do I need to provide the Trademark Office with the selling price of the assigned trademark? |
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No need to provide. When apply for the trademark assignment to the Trademark Office, it is necessary to provide a certificate of consent to assignment stamped and/or signed by assignor and assignee. The Trademark Office does not require a trademark assignment agreement with detailed trademark prices and specific terms and conditions. |