Legal Question in Intellectual Property in Georgia

transfer of trademark not registered but used in commerce

we have filed to register a trademark we have used for 1 year. previous owner transfered or assigned the trademark ownership to a non-profit taht that is sole shareholder of the company. trademark was not previously registered. it was however used in commerce by previos owner who closed her business last year. trademark was not gong to be used so it was donated to the non profit for use in commerce since it has some name recognition and goodwill. the contract that shows transfer/assignement was drafted and concluded in India. Is that contract/ assignement legal herein USA?

Can we be linked or held liable for any past debts or liabilities associted with the mark even though we are just associated with the mark since last year. We did not buy the company from last owner. Transfer of trademark was a donation. We are a new company functioning since last year and operated by a non-profit. The contract states no previous liability. Is that contract valid here? Do we need to take some more measures to secure our position? thank you.


Asked on 7/20/04, 11:52 am

1 Answer from Attorneys
Vivek Anand M/S.VIVEK ASSOCIATES

Re: transfer of trademark not registered but used in commerce

It all depends on how the contract of Assignment / Transfer has been drafted and finalised. We have to take shelter under the contract itself and see whether there is a non-binding / Indemnity clause wherein the previous owner of Trademark would not be liable for any acts of ommission by the subsequent user.It all boils down to the contract and about the jurisdiction if there is no specific clause incorporated in the agreement then it goes to show that the contract is territorial in nature.

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Answered on 7/21/04, 2:54 am


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