selling intellectual property

[lemonk]

I have some intellectual property related to a financial services idea. I have not used the name yet and and am considering selling the rights to the trademark registration. It is an ITU registration in the US and a full trademark in the UK, there are also domain names relating to the same name as part of the package, along with a UK (non-trading) limited company.

I am looking to sell all the rights to a US financial services company - e.g. bank, stockbroking firm etc.

Do you see any potential problems in offering the IP for sale and in transferring title?

My US registration was obtained on the basis of having a UK registered trademark.

Thanks.

 

[hexeliebe]

Problems as to what? Your question is WAY too broad to give a valid answer. Especially since the originating Trademark is registered in the U.K. and hence, in the European Union for which it is valid throughout Europe.

 

[lemonk]

would a potential buyer (who doesn't want to be nice) be able to challenge the trademark on the basis that it is registered as ITU and not trading yet?

Although a name is valuable as a potential brand for the future when it has never been used before, and has no prior 'associations' or perceptions, it may all the same, have less protection because it has never been used.

Essentially, could someone see and and like the name and instead of making an offer to buy it, challenge its registration because it's not in use?

 

[hexeliebe]

They could, but it would be difficult unless the name has been registered for a length of time (such as 10 years without use). The easy way around this is to use the name in the web address and put up a very basic webpage advertising the name and/or your use of it.

 

[lemonk]

thank you hexeliebe, will do. Sitting on that pumpkin seems to have raised you above the crowd!

 

[hexeliebe]

Just remember that before you begin negotiations with anyone, or take on someone who is using the trademark, consult with a patent/trademark attorney. This is not an area of law that you should try to deal with by yourself nor should you hire just any attorney.

This is not only a very specialized area of law, but also one that has international implications. Glad to help

 

[counsel]

An intent to use application includes a declaration that you in good faith intend to use the trademark in commerce within a short time period, that is, to sell goods or services. If you attempt to sell the name without ever having used it, then a third party might try to cancel your registration based on lack of intent to actually use it.

A website may or may not evidence use in commerce. And domain name itself creates NO intellectual property rights.

I would recommend consulting a good trademark attorney for guidance.