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Can an unregistered trademark be assigned?
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?
(a) The time period for trademark assignment is shorter and the success rate is higher. Trademark registration usually takes around 12-18 months, it may be conducted a substantive examination and faces the risk of rejection. The assignment of trademarks usually takes around 2-3 months after the assignor and assignee reach an agreement. Moreover, Since the assigned trademark is already been registered, there is no risk of being rejected by the Trademark Office, the success rate of the assignment is higher.
(b) The value of trademark assignment is higher. Before the assignment, the trademark has been operated very valuable by the assignor. After the assignment, the value is assigned to the assignee. Compared with a new-registered trademark, the assigned trademark has greater value and is more suitable for business promotion.
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What issues should be paid attention in the process of trademark assignment?
(a) Please pay attention to whether the trademark has been approved for registration. If the assigned trademark is not registered or has been revoked or declared invalid, such trademark cannot be protected by the Trademark Law, anyone has the right to use this trademark or apply for registration, and the assignee cannot obtain the trademark exclusive rights;
(b) Please verify whether the assignor has the right to dispose of trademark rights. That is, the assignor needs to be the owner of the registered trademark or a special authorized agent. If the trademark is co-owned, it also needs the consent of the co-owner.
(c) Please pay attention to the duration of the trademark. If the registered trademark is about to expire, the assignee and related parties should urge the trademark registrant to complete the renewal procedures to avoid damaging their commercial rights.
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Should the trademark still be used on the goods/services designated by the original trademark after assignment?
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?
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?
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.
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