Assignments and goodwill
Under US law, a trademark is assigned together with the goodwill it represents. A transfer of the bare mark with nothing behind it, sometimes called an assignment in gross, risks being treated as invalid. Agreements usually recite the transfer of goodwill and may include customer lists, recipes, specifications, or other assets that make the continuity real. Recording the assignment with the USPTO is not what makes it effective between the parties, but it protects the buyer against later purchasers and makes the public record match reality. Foreign registrations need separate recordals under each country's procedures. Buyers usually also ask for the domain names, social media accounts, and marketplace registrations tied to the mark.
Licenses and financing
A license lets someone else use the mark while ownership stays with you, and the licensor is generally expected to control the quality of the licensed goods or services. Royalty terms, territory, exclusivity, approval rights, and what happens on termination all deserve attention. Trademarks can also secure loans; lenders typically perfect their interest under state commercial law and often record it with the USPTO too. When a licensor or licensee enters bankruptcy, the treatment of the license raises its own questions, which agreements increasingly anticipate. Exclusive licenses should state clearly whether the licensee may sue infringers, since that right is not assumed in every case.
Putting the deal together
Bring the list of marks and registrations involved, the business purpose of the transaction, any existing licenses or coexistence agreements, and a draft term sheet if there is one. We review title and encumbrances, structure the transfer or license to fit the goal, and coordinate recordals at home and abroad. Tax treatment of payments for trademarks varies with structure and should be reviewed with your tax adviser. A first meeting usually identifies the terms that carry the most risk and the documents needed to close.
