Negotiating a Trademark Sale That Let the Seller Keep Using Its Own Name

Our client owned a registered trademark that had become valuable enough to attract an acquisition offer — channeled through an intermediary acting as agent for an undisclosed buyer. Selling a registered mark outright is straightforward in theory, but our client still relied on that name in connection with its own ongoing marketing and CRM services and could not simply walk away from it.

The deal needed to deliver clean, complete ownership to the buyer while preserving our client’s ability to keep operating under its own name — two outcomes that are normally in direct tension in a straight trademark sale. Accepting the buyer’s proposed assignment as drafted would have left our client exposed to an infringement claim over a name it had built and would continue to use.

We reviewed and negotiated the transaction structure end-to-end rather than accepting the buyer-side template:

• Assignment Review: We reviewed the proposed IP and Trademark Assignment in full, confirming the scope of rights being transferred — registration, goodwill, enforcement rights, and the right to pursue future filings — and tightened the seller’s representations and warranties regarding clear title and absence of competing claims.
• License-Back Negotiation: Rather than accept a full, unconditional transfer, we negotiated a license-back provision into the assignment itself, giving our client a continuing, irrevocable right to use the mark for its own business going forward — carved out by specific USPTO international classes so the buyer’s rights in its own field of use remained fully intact.
• Coexistence Protection: We negotiated a covenant binding the buyer — and anyone acting on its behalf — not to bring any claim against our client for using the mark within the carved-out classes. A license alone would not have fully addressed the infringement risk; the coexistence covenant removed it.
• Documentation and Closing: We finalized the Trademark Assignment and a standalone Trademark License Agreement as companion exhibits, sequenced so that the assignment and the license-back were executed together, with payment conditioned on a fully signed package.

The sale closed with the buyer receiving complete, registrable ownership of the mark and our client retaining a durable, contractually protected right to keep using its own name in its own field. The coexistence covenant we negotiated meant our client walked away from the transaction with sale proceeds in hand and no risk of being sued over a name it had built and would continue to use.

A standard-form assignment, signed as offered, would have delivered neither outcome cleanly. The structure we negotiated gave both parties exactly what they needed — and neither more exposure than they had agreed to accept.

Trademark transactions often look simpler than they are. We help clients on both sides of the table get to an outcome that reflects what they actually agreed to.

This is an illustrative case study. It does not constitute legal advice or create an attorney-client relationship.