Assignments: Selling the Mark
A trademark assignment is the legal transfer of ownership from one party to another. It includes not just the name, but the "goodwill" associated with the business.
Critical: An assignment without goodwill (assignment in gross) is invalid. The underlying assets or business continuity must typically accompany the mark.
Importance of Recording
When a mark is sold, the assignment should be recorded with the USPTO Electronic Trademark Assignment System (ETAS).
Recording puts the public on notice of the new owner. If you don't record, and the previous owner sells it again to an unsuspecting third party, your rights could be jeopardized. It also ensures renewal reminders go to the correct address.
Licensing & Quality Control
Licensing is renting the mark. You allow a third party to use your logo on their products (e.g., a Disney character on a t-shirt).
Requirement: The licensor must exercise "Quality Control." You must have the right to inspect the goods and ensure they meet your brand standards.
The "Naked Licensing" Trap
"Naked licensing" occurs when a trademark owner allows others to use the mark without any quality control provisions.
This is fatal. Courts have ruled that naked licensing constitutes abandonment of the mark because the trademark no longer functions as an indicator of a single, consistent source of quality.