Transfers

• Jurisdiction: Maryland

XIII. TRANSFERS

A. Assignment

1. All rights

An assignment of a trademark is the assignment of all rights to the mark and divests the assignor of any claims or rights to the mark. A writing is required to transfer federal registered marks¹⁷¹ and marks registered with the State of Maryland,¹⁷² although, unlike copyrights, trademark law does not absolutely require an assignment of common law marks to be in writing.¹⁷³ A written assignment is certainly far better proof of the intent of the parties.

2. Goodwill

In line with goodwill being such an important factor, a trademark assignment is valid only if it specifically states that the transfer includes the goodwill associated with the mark.¹⁷⁴ A simple statement such as, "Assignor transfers the mark and all goodwill of the business associated with the mark" is sufficient to meet the standard. A mark cannot transfer without goodwill, although the effect of doing so will be for the transferee to commence fresh use of the mark and be unable to tack to its use the use made by the transferor.

3. Assignment in gross

If an assignment does not include the goodwill, it is deemed to be "in gross," and the mark is susceptible of being deemed abandoned or the transfer deemed invalid.¹⁷⁵

B. License

1. Limited rights

A license is a grant to a third party of something less than full right of ownership of the mark.¹⁷⁶ Because a trademark is not tangible, it can be divided and licensed to different third parties based on a variety of parameters, including geography (in what regions is the licensee allowed to use the mark?); temporal (for how long, or during what period of time is the licensee entitled to use the mark?); exclusivity (is the license non-exclusive, so that others have similar rights?; is the license exclusive so that only the licensee, and not even the licensor, can use the mark under the parameters given to the licensee?; is the license exclusive, but reserving rights for the licensor?); product/service-based (which goods and services offered by the licensor is the licensee allowed to offer?); or mark-based (which permutations of the mark is the licensee entitled to use?). Without any written document as evidence, allowing a third party to use a mark likely creates a non-exclusive license.¹⁷⁷

2. Quality control—extent needed

A trademark license must include a quality control feature by which the licensor has the ability to oversee and control the quality of the goods or services offered by the licensee.¹⁷⁸...