Assignments vs. Licenses: What's the Difference?
By Casey Scott McKay ·
One document moves ownership; the other rents permission — and almost every downstream question about a brand turns on which one you signed. This article explains the line the law draws between an assignment and a license, why trademark law polices that line harder than copyright or patent law does, and what actually changes depending on which side of it you land: who owns the goodwill, who can sue an infringer, who signs the Section 8 declaration, whose balance sheet the asset sits on, and what happens when the other side files for bankruptcy. It works through the recharacterization problem — courts read substance, not captions, so an "assignment" where the seller keeps making the goods can be a license, and a "perpetual exclusive license" with no quality control can be an abandonment. It maps the hybrid instruments practitioners actually use, including the assignment with license-back, the brand holding company, and the option to purchase, and it flags the two traps that only ever bite licensors: the naked license and the accidental franchise. It closes with the copyright and patent comparisons that matter, the recordation rules, a decision framework, and the questions the courts have genuinely left open.
IP and Technology > Trademarks | Article | Published 15 January 2026 - Updated 2 July 2026 | Casey Scott McKay - marksy.us
Summary. One document moves ownership; the other rents permission — and almost every downstream question about a brand turns on which one you signed. This article explains the line the law draws between an assignment and a license, why trademark law polices that line harder than copyright or patent law does, and what actually changes depending on which side of it you land: who owns the goodwill, who can sue an infringer, who signs the Section 8 declaration, whose balance sheet the asset sits on, and what happens when the other side files for bankruptcy. It works through the recharacterization problem — courts read substance, not captions — maps the hybrid instruments practitioners actually use, and flags the two traps that only ever bite licensors: the naked license and the accidental franchise. It closes with the copyright and patent comparisons that matter, the recordation rules, a decision framework, and the questions the courts have genuinely left open.
Keywords: trademark assignment · trademark license · exclusive license · assignment in gross · goodwill · quality control · related company use · section 1060 · section 1055 · licensee standing · mission product holdings · section 365(n) · accidental franchise · license-back · sole license · holdover licensee · chain of title · recordation
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