Obtaining & Selling a Trademark | Trademarks: How To Obtain & Sell

A person obtains a trademark by being the first to use it in commerce on a good or service. It must be something that may be validly trademarked. Descriptive marks and generic marks generally may not be trademarked. Obtaining a trademark gives a person exclusive use of that mark. A trademark need not be registered, but registering a trademark gives the owner a presumption that the mark is valid and belongs to the owner.

How do I know if I am the first to use the mark?

In order to register your trademark, you need to be sure you are not infringing on someone else’s trademark. You must make sure your mark is available for use. You may want to hire someone to do this search for you, in order to ensure you have not missed the trademark in any market or area, and to ensure it is not confusingly similar to another mark. You may, of course, search state and federal trademark offices and conduct searches on the internet for the exact or similar words to the mark you seek to use, but you run the risk that you miss finding an exact trademark or similar trademark in another market or area upon which your mark infringes.

Can I sell my trademark?

A person who has a trademark may sell that his or her interest in the trademark to another. This is called an “assignment.” The person receiving the interest in the trademark is the “assignee.” The person selling his or her interest in the trademark is the “assignor.” That person becomes the owner of the trademark. This assignment must be in writing and signed. It must also include the goodwill of the business associated with the trademark, as that naturally goes along with the trademark. The assignee acquires all the rights of the assignor, including the right to prevent others from infringing on the trademark.

A person who has a trademark may give permission to another to use the trademark, without selling the trademark. This is called a “license.” The person receiving permission to use the trademark is the “licensee.” The person giving permission to use the trademark is the “licensor.” An exclusive license may include the right to prevent others from using the mark, or a confusingly similar mark in connection with a good or service. A license does not need to be in writing. The licensor, however, must retain adequate control over the quality of goods and services sold under the mark, and they must be in substantially equal in nature and quality to the goods or services sold under the original mark.