California Trademark Assignment and License Agreement Regarding Design Mark

State:
Multi-State
Control #:
US-1015BG
Format:
Word; 
Rich Text
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Description

A "trademark" is a word, design or combination used by an individual or a business to identify its goods or services. In some cases a trademark can also be a sensory mark--a sound, a color or a smell. Trademarks protect names used to identify goods (or services) and their source of origin. The law protects trademarks in part because trademarked items tend to carry with them certain quality assurances. You may use any kind of name or symbol as a trademark to identify your product. A license is a contractual right that gives someone permission to do a certain activity or to use certain property owned by someone else. Licensing agreement is an agreement between two enterprises allowing one to sell the other's property such as products or services and to use their name, sales literature, trademarks, copyrights, etc. in a limited manner. The stylized logo (also known as a design mark) is used to register words and/or letters having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and design. In other words, a design mark can protect a logo with or without words.
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FAQ

Critically, trademark cancellation proceedings are only available to petitioners who are challenging trademarks that have actually achieved Registration if the trademark is still pending registration, the petitioner/plaintiff should instead commence a Trademark Opposition Proceeding.

An assignment of IPR is a transfer of ownership between the assignor and assignee where the latter is free to exploit the rights for any purpose, and the former is paid for the same. Right to use is transferred with the ownership and the assignee is vested with the exclusive right to exercise the transferred rights.

A licensing agreement allows one party (the licensee) to use and/or earn revenue from the property of the owner (the licensor). Licensing agreements generate revenues, called royalties, earned by a company for allowing its copyrighted or patented material to be used by another company.

Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Generally, paper filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.

A trademark licence is an agreement between a trademark owner (the licensor) and another entity (the licensee) in which the licensor permits the licensee to use its trademark for commercial purposes.

Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments, where important concepts such as the chain of title and recording an assignment are discussed.

Elements Required for Valid Trademark Assignments Clearly identify the mark(s) covered by the agreement. Document the consideration for the agreement. Assign the trademark's goodwill to the assignee. Goodwill includes the connection the mark facilitates between the company and its customers.

A trademark licensing agreement is a legal contract between a trademark owner and another party that have agreed to use the trademark on preapproved terms decided between the contracting parties.

Essentially, you cannot ask someone to stop using a trademark based on your federal rights while your application is pending, because you do not yet have the rights of a federal trademark registration. You may still have limited common law rights which can be enforced.

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California Trademark Assignment and License Agreement Regarding Design Mark