THE ASSIGNMENT OF TRADE MARKS AND TRADE NAMES

Unfortunately there is much confusion in the books in regard to the transferability of trade marks and trade names. The law on the matter is neither clearly stated nor always uniformly applied. The generalization that one finds most frequently, both in cases and in text books, is the categorical assertion that trade marks and trade names are not assignable in gross - that they can be transferred only as incidental to a transfer of the business or property in connection with which they have been used. Rightly interpreted, this statement is doubtless a truism.

However, the implications frequently drawn from it are palpably erroneous. For example, it is sometimes assumed that a trade mark can never be assigned apart from the physical location or the going business in connection with which it has been used. Also that the transfer is not effective if the transferor continues to manufacture or sell, though under a different mark, an article identical with that on which the assigned trade mark was used. These propositions, if true, are clearly inconsistent with the expectations of many a business man, for attempted transfers under such circumstances are not unusual.

In view of the uncertainty which exists it seems worth while to examine the question in some detail to determine, insofar as we can, the proper limits on the transferability of trade marks and trade names.