an assignment of trademark

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on November 25, 2020

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

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Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

By Eric Perrott, Esq.

Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred. 

A trademark could be a word, a phrase, a symbol, or even a shape. However, one thing all different forms of trademarks share are that they represent a single source. They are essentially a shortcut for consumers to bring to mind a company’s quality, customer service, and even values, at a glance. A trademark only has value because of the impact it has on consumers and the exposure consumers have had to that brand. 

When transferring a trademark, simply allowing another company to use the trademark is not enough. You must transfer not only the right to the word or image, but also the underlying goodwill behind the trademark.

It is crucial that trademark owners properly transfer, or “assign” their trademarks to avoid delays, confusion, or worst of all, a break in title that could invalidate the earlier use of the trademark and ruin the value of the trademark. 

A Trademark Assignment Transfers Trademark Rights

A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a “transfer of goodwill” – this is written fully as a transfer of “(1) all the property, right, title and interest in and to the Trademark including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the Trademark is used and which is symbolized by the Trademark; (2) all income, royalties, and damages hereafter due or payable to Assignor with respect to the Trademark, including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark; and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademark.” 

By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights.  However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark. 

If the goodwill is not transferred, the new owner is essentially stating that they will not work to maintain the mark’s reputation among consumers. 

Common Issues with Preparing and Filing Assignments

When filing an assignment, either current or in the past, the assignment requires: 

• the proper names of owners – if business entities, then complete names of active business entities
• the date any transfer took place, whether in the past or on the date of signing 
• the language above for all goodwill and interest and rights to sue for past infringement 
• signatures of both the assignor and assignee – or qualified representatives of those entities

This may seem simple, but when completing a trademark assignment, it is important to understand why each of these items are needed in order to ensure that the transfer is done correctly. The mere fact that the USPTO accepts a recordation of an assignment does not mean it is valid.

 One common pitfall of attempting to file an assignment yourself is mixing up assignor or assignee, writing the wrong owner, or assigning the mark to an individual and not a business entity. Before assigning a trademark, ensure that you consider why the transfer is taking place. 

For example:

• You may be transferring a trademark from one company you own to another as a restructuring of assets, such as a holding company or a change in tax status. 
• You might have sold the business and all underlying trademark rights in the business name.
• You may be transferring a mark according to a will or bankruptcy.
• You may be transferring from your name, personally, to a newly created entity

All of these situations have their own nuances and it is easy to confuse who owns the rights with who is receiving them. No matter what, ensure that your assignment matches the owner on the trademark registration. Sometimes a trademark might change hands two or three times, with a few corporate name changes in the middle. You should be able to draw a straight line from the original owner to the new owner, and each step must be documented with the USPTO to ensure the recordation is valid. It might be a multi-step process involving multiple parties and, while complicated, it is essential that the ownership and chain-of-title are both correct.

Another common pitfall occurs when filing other documents, such as renewals. The filer is required to sign a sworn statement that the owner is correct. If the old owner files a renewal in the name of the old organization, the owner may have made a sworn statement that it was the owner of the mark, which could cause delays or even prejudice the registration in future proceedings.

Similarly, if the new owner files, they cannot simply change the name in the renewal. This will cause significant delays, as they will need to prepare an assignment and record it with the USPTO’s assignment branch before the renewal can be filed. If close to deadlines, this could get extremely complicated and cause additional fees or potential loss of rights.

Trademark assignments are an important part of the trademark lifecycle, as they allow trademark owners to buy and sell brands and further benefit from the goodwill represented by their brands. However, trademark owners should carefully consider the content of any assignment documents and ensure that they match the reality of the situation and the requirements of the USPTO.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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Trademark Assignment

A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.

This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.

This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.

How to use this document

This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.

This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.

Once the form is complete, the parties can undertake the following steps:

1) Sign and execute the form in front of a notary (both parties)

2) Have the notarization completed

3) Record the Trademark Assignment with the United States Patent and Trademark Office

Applicable law

Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).

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Trademark Assignment: How to Transfer Trademark Ownership

Trademarks are valuable representations of the goodwill of your business that connects a specific product to your brand for your consumers. As your startup or business matures (or if you acquire a company) you will likely need a trademark assignment agreement. This is a type of agreement for transferring ownership that provides a variety of business benefits necessary for protecting purchased or transferred trademark rights.

Table of Contents

What Is Trademark Assignment?

A trademark assignment is the formal process for transferring the ownership of a trademark and the associated rights that ownership provides (e.g., use, licensure, further assignment, etc.). Often, a trademark assignment is part of a larger transaction such as an asset purchase agreement or a corporate reorganization.

When Is the Assignment of Trademark Procedure Necessary?

You will need an assignment of trademark any time you are transferring trademarks permanently. Such transfers can be within a larger corporate structure (e.g., from a parent company to a subsidiary), to a family member (e.g., via an estate administration), or to an outside party via sale.

For situations that don’t involve the owner of the trademark transferring to a new owner, you may consider a trademark licensing agreement. Unlike a trademark assignment, a license does not transfer ownership, and instead, gives the rights commonly associated with ownership. For example, you typically see trademark licensing in the context of franchise agreements, merchandising, endorsement deals, etc.

Here’s How to Transfer Trademark Ownership

The process for transferring a trademark via assignment may vary depending on the context of your situation. Relevant to determining the process will be the nature of the transaction along with the relationship between the assignee and assignor. Your checklist will also vary depending on if you are the buyer or seller of the trademark. That said, you will generally consider the following steps for a complete assignment:

• Due diligence
• Determine authority to transfer the trademark
• Execute trademark assignment agreement (What should be included in a trademark assignment form)
• Complete ancillary agreements necessary to give effect to trademark transfer
• Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership

1. Due Diligence

Not all trademarks are created equally because of their rights that exist in common law and through statutory law at the state and federal levels. As a result, it’s important to research the trademark status before taking possession. Primarily, you will want to search for its registration number with applicable state and federal agencies (i.e., the USPTO). Having a registered mark improves your ability to enforce against trademark infringement and protect its value after acquisition as part of the goodwill of the business.

2. Determine Authority to Transfer the Trademark

Another integral part of transferring a trademark through an assignment is verifying that the assignor has the authority to transfer the title to the assignee. A Miami trademark lawyer from Cueto Law will be able to help you verify that authority, but you will generally check in two ways. The first will be confirming ownership reflected on trademark registration documents recorded with the USPTO. However, you will also want to confirm that ownership and authority via the business entity organizational documents.

3. Execute Trademark Assignment Agreement

After completing proper due diligence, you will need to execute a trademark assignment agreement. The purpose of the agreement is to provide evidence of the transfer and to allocate rights and obligations among the assignor and assignee.

What Should Be Included in a Trademark Assignment Form?

The contents of your trademark assignment agreement will also depend on the nature of the transaction and the relationship between the original owner and the new owner of the mark. Typically, you will see the following elements with a trademark assignment form contract:

• Names of the parties and the agreement’s effective date
• Recitals explaining the circumstance for the trademark transfer (e.g., gift, reorganization, purchase asset agreement, etc.)
• Consideration for the intellectual property transfer (e.g., value exchanged such as cash, real estate, or other personal property
• Representations and warranties surrounding past use, current owner, etc.
• Indemnity surrounding past or future claims related to the use of the trademark
• Conflict resolution provisions (e.g., mediation, arbitration, governing law, choice of venue, etc.)

4. Complete Ancillary Agreements

As mentioned above, transferring ownership of the trademark is likely part of a larger transaction such as the sale of a company. This fact usually means you will need to complete other contracts and documents for the assignment to be enforceable. To name a few, such documents might include:

• Asset purchase agreement
• USPTO forms
• Assumption of liability agreement
• Intellectual property licensing agreements
• Corporate consent resolutions

5. Notify the USPTO of Change of Ownership

Part of a complete assignment of a trademark will require finishing the USPTO application process for a name change on the trademark registration. It’s important to notify the USPTO of the change in ownership and to update contact information for future correspondence related to your trademark. Additionally, maintaining accurate information with the USPTO for your registered trademark is necessary for protecting your trademark rights against infringement, dilution, and other legal issues.

What Are the Implications if a Trademark Transfer Is Not Done Properly?

Failing to properly transfer a trademark from one party to another can lead to exposure and create unnecessary risk. Most of the consequences stem from the fact that improper trademark transfers create confusion about who actually owns the mark. If uncertainty exists about proper ownership, it can make it more difficult to enforce your trademark rights and protect against future trademark infringement or track trademark infringement statute of limitations .

When it appears multiple parties have rights to a trademark, it can also create a risk of trademark dilution (i.e., its use becomes more in the public domain, weakening its proprietary value). As a final point, trademark transfers are usually part of a broader transaction, and failing to properly execute the assignment may jeopardize the success of the whole transaction or, at the least, substantially add to the closing costs.

As detailed above, a trademark assignment form should provide all of the information surrounding the transfer (e.g., party names, effective date, value transferred, warranties, etc.). Additionally, the assignment should provide for more general contract terms related to termination rights, conflict resolution methods, indemnities, and necessary cross-references with any simultaneously entered into agreements.

Need Help with a Trademark Assignment Agreement?

If you are in the process of buying, selling, or otherwise transferring a trademark, then a trademark assignment agreement will be a key document for establishing and protecting those trademark rights. The trademark attorneys at our firm help clients draft and negotiate these agreements along with related legal advice and services such as representations in front of the USPTO.

Contact Cueto Law Group today to properly transfer ownership of a trademark.

Trademark Assignment Template Sample

Below are a PDF and Word version of a trademark consent agreement template that you can review as a trademark assignment agreement sample. As a reminder, these are just sample forms and further modification is likely necessary to meet any particular assignment needs.

Key Takeaways on How to Transfer a Trademark

When transferring a trademark, two fundamentals will be essential for increasing the chances of a smooth transition. The first is having sound documentation and contracts (i.e., an assignment agreement) in place between the assignor and assignee. The second is confirming that all applications and registrations with the USPTO accurately reflect that new proprietorship.

Can You Use an Asset Purchase Agreement in Place of a Trademark Transfer Agreement?

Depending on the complexity of the sale, you may be able to incorporate a trademark assignment into an asset purchase agreement (APA) rather than using a separate trademark transfer agreement. Generally, APAs are much more complex documents, and an assignment agreement is a better vehicle for transferring titles.

How Do I Submit a Trademark Assignment to USPTO?

The USPTO has an Electronic Trademark Assignment System (ETAS) where you can submit and record the transfer of the trademark or simply update name change in ownership (e.g., if you recently married or divorced). Alternatively, you can submit the information via mail using a Recordation Form Cover Sheet.

Do Patent Assignments Need to Be Recorded?

Yes, recording a patent assignment with the USPTO is recommended and sometimes necessary for many of the same reasons why recording a trademark assignment is worthwhile. You can record a patent assignment through a similar USPTO system as you would for a trademark, known as the Electronic Patent Assignment System.

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the USPTO’s Assignment Center System .  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

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After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid , the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.

In contrast, if an assignment of a trademark is made without the mark’s accompanying goodwill, then it is considered an assignment “in gross” — and the assignment is invalid under U.S. law. Courts have analyzed whether an assignment was made in gross in a few different ways, but, as is the case with much of trademark law, protecting customers from deception and confusion is the primary motivation behind any analysis for determining the validity of an assignment.

One way courts determine if an assignment was made in gross is through the substantial similarity test. This test essentially examines whether the assignee is making a product or providing a service that is “substantially similar” to that of the assignor, such that consumers would not be deceived by the assignee’s use of the mark. This analysis includes an assessment of the quality and nature of the goods and services provided under the mark post-assignment.  Thus, even if an assignee is using the mark on the same type of goods, but the goods are of lower quality than the goods previously offered by the assignor under the mark, the assignment could be invalid. However, slight or inconsequential changes to goods and services after an assignment are not likely to invalidate the assignment, as such changes are to be expected and would not thwart consumer expectations.

Decisions on the question of substantial similarity are only marginally instructive, as the  test calls for a fact specific inquiry into what the consuming public has come to expect from the goods or services offered under a given mark. For example, courts have noted that despite similarities in services and goods, “even minor differences can be enough to threaten customer deception.” [1] Instances of products or services that were deemed not substantially similar (and thus resulted in invalid assignments) include: an assignee offering phosphate baking powder instead of alum baking powder; [2] an assignee using the mark on a pepper type beverage instead of a cola type beverage; [3] an assignee producing men’s boots as opposed to women’s boots; [4] an assignee using the mark on beer instead of whiskey; [5] and an assignee selling hi-fidelity consoles instead of audio reproduction equipment. [6]

Conversely, case law has also shown that substantial similarity can be found even when products or services do differ in some aspects, if consumers aren’t likely to be confused. For example, the following product changes did not result in a finding of an invalid assignment: an assignee offering dry cleaning detergent made with a different formula; [7] an assignee using thinner cigarette paper; [8] and an assignee selling a different breed of baby chicks. [9]

Whether goods or services are substantially similar may seem like an easy test to apply, but, as case law demonstrates, this fact-intensive analysis can yield results that look strange in the abstract. Disputes involving the validity of a trademark assignment are decided on a case-by-case basis, using the specific facts at hand to determine if consumer expectations are being met under the new use. Thus, while trademarks acquired through assignment can have significant value (and grant the assignee important rights formerly held by the assignor), assignees should be wary of changes to goods or services under an acquired mark that could be seen as deceiving the public.

[1] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[2] Independent Baking Powder Co. v. Boorman , 175 F. 448 (C.C.D.N.J.1910).

[3] Pepsico, Inc. v. Grapette Company , 416 F.2d 285 (8th Cir. 1969).

[4] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[5] Atlas Beverage Co. v. Minneapolis Brewing Co. , 113 F.2d 672 (8 Cir. 1940).

[6] H. H. Scott, Inc. v. Annapolis Electroacoustic Corp. , 195 F.Supp. 208 (D.Md.1961).

[7] Glamorene Products Corp. v. Procter & Gamble Co. , 538 F.2d 894 (C.C.P.A. 1976).

[8] Bambu Sales, Inc. v. Sultana Crackers, Inc. , 683 F. Supp. 899 (1988).

[9] Hy-Cross Hatchery, Inc v. Osborne 303 F.2d 947, 950 (C.C.P.A. 1962)

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Fact Sheet: Introduction to Trademarks

Assignments, Licensing, and Valuation of Trademarks

Updated: December 18, 2023

1. How do I know what my trademark is worth?

The value of a trademark lies in the goodwill associated with that trademark. Goodwill is like the trademark right itself—an “intangible” asset (as distinguished from a “tangible” asset that is a physical asset that can be seen or touched, such as land, buildings, machinery, inventory, and cash) that is part of the value of the trademark owner’s business. It can be quite difficult to assign a monetary value to goodwill because many variables must be considered, such as the duration and extent to which the owner has used the trademark in business.

Some of the most common approaches to/methods of valuing a trademark are: (a) the income approach, which assigns a value to a trademark based on past and expected future profits of the goods/services associated with the trademark; (b) the market approach, which assigns a value based on comparisons of transactions (such as royalties, i.e., license fee rates) involving similar assets; (c) the cost approach, which assigns a value based on the cost of creating a trademark and the cost of replacing the existing trademark with a trademark of equivalent market power; and (d) the relief from royalty method, which estimates the expected royalty savings attributable to the ownership of the trademark.

Many companies specialize in the valuation of trademarks and may provide significant expertise in attributing a monetary value to a trademark.

See also Brand Valuation  Fact Sheet

2. Can I sell my trademark?

Yes, you can sell and/or assign (transfer) your trademark. An assignment of trademark rights can be either outright, in that it results in the total transfer of ownership of such rights from one entity to another, or (in some countries/jurisdictions) partial, resulting in the transfer of only a portion of the trademark rights.

The laws governing trademark assignments vary from one jurisdiction to another. The laws and regulations of each jurisdiction where a trademark exists should be carefully reviewed before a trademark assignment is undertaken. Failure to comply with the requirements could lead to unanticipated tax consequences or result in the invalidation of the transfer.

See also Trademark Assignments  Fact Sheet

3. Can I retain ownership of a trademark if I allow others to use it?

Yes. You can allow another party to use your trademark in commerce, while still retaining ownership of the mark, by entering into a license agreement with that person or entity.

Licensing of the use of trademarks facilitates merchandising, franchising, and distribution agreements, which play an important role in the way goods and services are distributed, marketed, and sold, both domestically and internationally License agreements may contain provisions governing the term (length) of the license, the territory covered by the license, the royalty the licensee must pay to the licensor for use of the trademark, whether the license must be recorded, whether the license covers all or just some of the goods or services protected by the licensed mark, whether the license is transferable or sublicensable, and whether the licensee has exclusive or sole rights to use the trademark (and if so, in which territory). Many license agreements will also have provisions permitting the licensor to control the quality of the goods or services produced or offered by the licensee under the licensed trademark, which are known as “quality control provisions.” In fact, to maintain your trademark rights  in many jurisdictions it is mandatory  to include quality control provisions in a trademark license agreement and, even in jurisdictions where it is not mandatory, it is always a good idea to include such provisions.

See also Trademark Licensing  Fact Sheet.

Additional Resources

Country Guides : Essential Information on Trademark Protection Worldwide Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions.  Membership required.

Please give us your  feedback on whether this fact sheet was helpful or if you have suggestions for other fact sheet topics.

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Trademark Assignment

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

• All involved parties – the assignor and assignee – should be identified.
• The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
• Consideration must be listed (i.e. what each party is receiving).
• List the effective date of the transfer.
• Contract must be duly executed.
• Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

• Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
• Sale of business : A trademark owner may decide to focus on a different business or retire.
• Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

• Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
• Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
• Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
• Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
• Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
• Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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This trademark assignment is between , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor is the owner of certain intellectual property rights, including the trademarks listed on Exhibit A , and all goodwill of any business connected to or symbolized by those (collectively, the " Trademarks ").

The Assignor wishes to sell to the Assignee all of its interest in the Trademarks.

The parties therefore agree as follows:

1. ASSIGNMENT OF TRADEMARKS.

The Assignor hereby sells its entire and exclusive interest in:

• (a) the Trademarks;
• (b) the registrations of and applications for registrations of each Trademark;
• (c) the goodwill of any business connected with or symbolized by each Trademark;
• (d) income, royalties, and damages payable to the Assignor and related to the Trademarks, including payments for past or future infringements or misappropriations of the Trademarks; and
• (e) all rights to sue for past, present, and future infringements or misappropriations of the Trademarks.

2. PAYMENT.

As consideration for the assignment of the Trademarks and the Assignor's representations, the Assignee shall pay the Assignor , to be paid within days of the effective date of this assignment.

3. RECORDATION.

In order to record this assignment with the United States Patent and Trademark Office, within hours of the effective date of this assignment, the parties shall sign the form of trademark assignment agreement attached as Exhibit B . The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee may not assign or otherwise encumber its interest in the Trademarks or any associated trademark registrations until it has made the payment in subsection (a) to the Assignor. Any assignment or encumbrance contrary to this provision shall be void.

5. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

• (a) is the sole owner of all interest in the Trademarks;
• (b) has not assigned, transferred, licensed, pledged, or otherwise encumbered the Trademarks, or agreed to do any of these;
• (c) has full power and authority to enter into this assignment and make the assignment in section 1;
• (d) is not aware of any violation, infringement, or misappropriation, or claim of any of these, of any third party's rights by the Trademarks;
• (e) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
• (f) was not acting within the scope of employment of a third party when conceiving, creating, or otherwise performing any activity related to, the Trademarks.

The Assignor shall immediately notify the Assignee if any facts or circumstances arise that would make any of these representations inaccurate.

6. ADDITIONAL DOCUMENTS.

On request, the Assignor shall:

• (a) provide the Assignee with a complete copy of all documentation (in any format) relating to the Trademarks for the Assignee's own use, to meet record-keeping requirements of the Assignee, or to allow the Assignee to assert its rights as granted under this assignment; and
• (b) execute and deliver to the Assignee any additional papers, including any separate assignments of the Trademarks, and perform all lawful acts necessary to record the assignment in the United States and throughout the world. 

7. INDEMNIFICATION.

The Assignor shall indemnify the Assignee from:

• (a) any third-party claim that a Trademark or its use, assignment, sale, or reproduction infringes or misappropriates a trademark, trade secret, or other intellectual property;
• (b) any third-party claim that this assignment conflicts with or breaches any agreement, encumbrance, or other obligation to which the Assignor is a party or of which the Assignor has knowledge;
• (c) any claim relating to any past, present, or future use, licensing, distribution, marketing, disclosure, or commercialization of a Trademarks by the Assignor; and
• (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to (a), (b), or (c) above.
• (1) the Assignee promptly notifies the Assignor of that claim;
• (2) the Assignor controls the defense and settlement of that claim;
• (3) the Assignee cooperates fully with the Assignor in connection with the Assignor's defense and settlement of that claim; and
• (4) if requested by the Assignor, the Assignee stops all sales, distribution, and public use of the infringing Trademarks.
• (1) obtain the right for the Assignee to continue to use the infringing Trademark;
• (2) modify the infringing Trademark to eliminate the infringement (if possible);
• (3) provide a substitute noninfringing Trademark to the Assignee under this assignment (if possible); or
• (4) refund the amounts paid to the Assignee under this assignment for the infringing Trademark, on terms and conditions agreeable to the parties.
• (c) The Assignor will have no other obligations or liability if infringement occurs, and will have no other obligation to indemnify the Assignee in case of infringement. The Assignor will not be liable for any expenses incurred without its prior written authorization and will have no obligation to indemnify the Assignee if the infringement is based on: (1) any modified form of the Trademarks not made by the Assignor or (2) the laws of any country other than the United States of America or its states.

8. GOVERNING LAW.

• (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
• (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

9. COUNTERPARTS; ELECTRONIC SIGNATURES.

• (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
• (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

10. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

11. NOTICES.

• (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
• (b) Addresses. A party shall address notices under this section to a party at the following addresses:
• If to the Assignor: 

• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

12. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

13. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

14. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

15. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE]

EXHIBIT A LIST OF TRADEMARKS

EXHIBIT B FORM OF RECORDABLE TRADEMARK ASSIGNMENT

For good and valuable consideration, the receipt of which is hereby acknowledged, , an individual a(n) (the " Assignor ")  hereby assigns to , an individual a(n) (the " Assignee ") all of the Assignor's interest in the trademarks, including the appurtenant goodwill associated with those trademark registrations and applications identified in Attachment A , and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

ATTACHMENT A [TO EXHIBIT B] INTELLECTUAL PROPERTY

Free Trademark Assignment Template

How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.

Trademark assignment: How-to guide

Trademark assignments are important tools in the complicated world of intellectual property that allow trademark owners to easily transfer their ownership rights from one business to another. Trademark assignment is essential for both corporate transfers of brand assets and individual inventors wishing to safeguard their intellectual property.

The article serves as a helpful manual to assist readers in accurately navigating the formal process of trademark assignment. It goes deep into procedural details and legal requirements, producing an extensive guidebook intended to assist both people and organizations. It also emphasizes how utilizing a trademark assignment template may be extremely simple, enabling stakeholders to transfer trademark ownership and rights with confidence and efficiency.

What is a trademark assignment?

A trademark assignment is a legally binding agreement in which the owner of a trademark (the assignor) transfers its rights to another person (the assignee) through a trademark application at the  United States Patent and Trademark Office  (USPTO). This transfer includes all related rights, including the ability to use, license, and enforce the trademark.

By signing a trademark assignment agreement, the assignor transfers ownership of the trademark, and the assignee gains all authority and control over it. This process makes it possible for ownership to be transferred in a clear, legal manner, providing certainty to both parties regarding their respective rights and obligations.

The legal process involved in assigning a trademark includes several key steps.

• Drafting the assignment : Create a detailed trademark assignment agreement that specifies all of the transfer's terms and conditions. This agreement must abide by all relevant intellectual property laws and regulations.
• Executing the assignment : After the agreement is written, both parties must execute it by the law, which may involve notarization or the presence of a third-party witness.
• Recordation of the assignment : After execution, the assignee usually sends the agreement to the appropriate authority or patent and trademark office for trademark registration and recording, together with any necessary supporting papers. The act of formally registering or documenting the transfer of ownership of a specific object or piece of property with the relevant authorities is known as recording. Recordation ensures that the necessary legal entities formally acknowledge the transfer of ownership or rights when an assignment occurs, such as with real estate, intellectual property rights, or other assets.

Ensuring the legality and enforceability of the assignment throughout this procedure requires compliance with the legal formalities and pertinent rules.

How much does it cost to file a trademark assignment?

Legal aid may be required in addition to administrative expenses when filing a trademark application. The jurisdiction, the difficulty of the task, and whether or not legal aid is retained all affect the real expenses.

The applicable trademark agency or authority, the United States Patent and Trademark Office (USPTO), often charges administrative costs for the assignment's procedure. These  administrative fees  can vary, although they are typically low compared to other legal procedures. Additionally, attorney costs will be included in the overall cost if legal aid is requested to prepare or evaluate the assignment agreement.

In this scenario, the free trademark assignment template provided by LegalZoom can help one get started.

How do you assign ownership of a trademark?

Assigning ownership of a trademark involves several key steps:

• Drafting the agreement : Start by creating an extensive trademark assignment agreement that specifies all of the transfer's terms and circumstances. Provide information on the trademark being transferred, the assignor and assignee's names and addresses, the payment for the transfer, and any guarantees or representations.
• Reviewing and editing : Examine the written agreement closely to make sure all the material is correct and comprehensive. Make sure that all words are precisely defined and represent the objectives of both parties by making any required modifications or revisions.
• Execution : Both the assignor and the assignee must sign the agreement after it has been finalized. To authenticate the agreement, signatures may need to be witnessed or notarized, depending on the criteria and preferences set out by law.
• Submission : Send the signed agreement to the appropriate authorities or patent and trademark office for recording. This stage gives the assignee legal recognition as the new trademark owner and formalizes the ownership transfer.
• Keeping records : Preserve accurate documentation of the assignment agreement, including signed copies and any contact with the office. These documents function as evidence of the transfer and may be helpful in the event of disagreements or issues about trademark ownership.

To prevent future disagreements or issues, it is essential to guarantee the completeness and quality of the information provided throughout the assignment process. Verify the information in the agreement again to make sure it is correct and reflects the goals of both parties. Stakeholders can confidently assign ownership of a trademark by carefully following these procedures.

Trademark assignment instructions

Trademark assignment  instructions provide a step-by-step guide for completing each section of the trademark assignment document. Here's a brief overview:

• Introduction : Start by introducing the purpose and scope of the assignment. Clearly outline the parties involved (assignor and assignee) and the trademark(s) being transferred.
• Identification of trademark : Provide detailed information about the trademark(s) being assigned, including registration numbers as issued by the  World Intellectual Property Organization  (WIPO), descriptions, and any associated rights or goodwill.
• Consideration : Specify the consideration or payment for the transfer of ownership of the trademark. This may include monetary compensation, goods, services, or other valuable assets.
• Warranties and representations : Include any warranties or representations made by the assignor regarding the validity of the trademark(s) being transferred. Ensure that these statements are accurate and comply with legal requirements.
• Execution and signature : Clearly outline the process for executing the assignment agreement, including signature requirements for both parties. Ensure that signatures are obtained according to legal requirements.
• Recordation : Provide instructions for recording the trademark assignment with the relevant office or authority. Include any necessary forms or documentation required for recordation.

By following these instructions, stakeholders can complete the assignment process effectively while ensuring compliance with legal requirements and protecting their rights.

Recordation of the trademark assignment

If you wish to transfer ownership, the recordation of a trademark assignment with the appropriate authorities is crucial for several reasons:

Legal recognition : Recording the assignment provides legal recognition of the transfer of ownership. This formalizes the change in ownership and establishes the new trademark owner's rights in the eyes of the law.

Public notice : Recordation serves as public notice of the trademark assignment, alerting third parties to the change in ownership. This helps prevent unauthorized use or infringement of the trademark by providing clarity on who holds the rights to the mark.

Priority : Recordation establishes the priority of ownership, particularly in cases of conflicting claims or disputes. The assignee who records the assignment first typically has superior rights over subsequent claimants.

Enforceability : A recorded assignment is generally more enforceable in legal proceedings. It provides concrete evidence of the transfer of ownership, making it easier for the new trademark owner to assert their rights and defend against infringement.

Preservation of rights : Recordation helps protect the rights of the new trademark owner by ensuring that the assignment is properly documented and recognized by the relevant authorities. This safeguards against challenges to ownership and provides clarity in case of legal disputes.

How long does it take to record a trademark assignment?

The timeline for recording a trademark assignment with relevant authorities can vary depending on several factors:

Processing time : Typically, the trademark office or authority, USPTO, will have its  own processing time  for recording assignments. This can range from a few weeks to several months, depending on the efficiency of the office and the volume of assignments being processed.

Completeness of documentation : The completeness and accuracy of the documentation submitted with the assignment can affect processing times. Any missing or incorrect information may result in delays as the office requests additional information or clarification.

Potential delays : Delays can occur due to various reasons, such as backlog at the office, administrative errors, or unexpected issues with the assignment documentation. Additionally, if there are any challenges or disputes regarding the assignment, this can prolong the process.

Communication with authorities : Effective communication with the relevant authorities can help expedite the process. Prompt responses to any requests for information or clarification can help avoid unnecessary delays.

Overall, while there is no fixed timeline for recording an assignment, stakeholders should be prepared for potential delays and factor this into their planning. By ensuring that all documentation is complete and accurate and maintaining open communication with the authorities, stakeholders can help minimize delays and expedite the recording process.

In summary, trademark assignment holds significant importance for both individuals and businesses alike. For individuals, it provides an avenue to transfer ownership of a trademark they may have developed, allowing them to monetize their intellectual property or pass it on as part of their estate planning. For businesses, trademark assignment facilitates strategic maneuvers such as mergers, acquisitions, or rebranding efforts, enabling them to consolidate their brand portfolio or expand into new markets.

To guarantee the seamless transfer of trademark rights, minimize potential conflicts, and safeguard the integrity of the brand, it is important to adhere to legal standards and provide comprehensive documentation, regardless of the circumstances. All things considered, trademark assignment is a vital tool that helps people and companies use their intellectual property assets to their advantage for both financial benefit and a competitive advantage in the market.

To speed up the creation of your assignment document, make use of the trademark assignment template that is supplied at the top of this page. Whether you're an individual looking to safeguard your intellectual property or a company owner transferring trademark rights, our template provides an organized format for recording the assignment agreement, making the transfer procedure more accurate and straightforward.

Frequently asked questions

What's a trademark assignment.

A trademark assignment is a legal transaction that involves transferring ownership rights of a trademark from one party to another. Whether you are acquiring or relinquishing trademark rights, this process establishes clear guidelines to ensure fairness and transparency in the exchange of ownership. To complete a trademark assignment, you'll need to provide the following information:

• Details of the current trademark owner, including their name and contact information
• Information about the new trademark owner, including their name and contact information

What is the procedure for trademark assignment?

The procedure for trademark assignment involves transferring ownership rights of a trademark from one party to another through a legally binding agreement. This typically includes drafting a trademark assignment agreement, identifying the current owner and the new owner, specifying the trademark(s) being transferred, determining the consideration for the transfer, obtaining signatures from both parties, and recording the assignment with the relevant office or authority.

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How to transfer trademark ownership: trademark assignment, how do you transfer ownership of a trademark.

To change the owner of a federal trademark registration or application, a trademark assignment should be signed and recorded with the USPTO. A trademark assignment is a document signed by the original owner (“assignor”) that transfers ownership of the trademark to a new owner (“assignee”). In most cases, the new owner does not need to sign the document because only the assignor signs the trademark assignment to transfer trademark rights. The USPTO offers a helpful online resource on trademark assignments .

Need to transfer trademark ownership? Email Vic at  [email protected]  or call  (949) 223-9623  to see how we can help transfer trademarks. 

How much does a trademark assignment cost?

To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings . The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks .

For multiple marks, we can draft a single trademark assignment to be signed only once. The executed trademark assignment must then be properly recorded against each trademark to be transferred. Contact us to obtain a precise quote for transferring a trademark filing.

What should be included in the trademark assignment?

It is important to specify the details of the trademark(s) to be transferred. The trademark assignment should include:

• name and address of the new owner (assignee);
• if the assignee is a company, the type of entity and state of incorporation;
• specific details of the trademark application(s) and/or registration(s) to be transferred; and
• language regarding the transfer of goodwill associated with the marks.

If multiple marks are involved, a single trademark assignment may include a schedule that lists all the trademarks to be transferred.

Keep in mind that a license to use a trademark is not the same as transferring ownership of the mark. In a trademark license, the licensor still owns the mark.

Can an ITU application be transferred prior to showing use of the mark?

Trademark assignments can get tricky in Intent-To-Use trademark applications . That’s because an ITU application is generally not transferable before the mark has been used. The USPTO wants to see the original applicant submit evidence of use of the mark by filing a Statement of Use / Amendment to Allege Use before filing a trademark assignment. Certain exceptions to this rule include the transfer of an entire line of business (e.g., business of the original trademark owner is acquired by a new owner). In these special circumstances, a trademark assignment filed before the mark has been used might be acceptable if the assignment contains special language to effect a proper transfer of an ITU mark.

Should trademark assignments be recorded with the USPTO?

An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner to the new owner. This will enable the public to search and recognize the new trademark owner. If the new trademark owner plans to file new trademark applications for marks similar to the assigned trademark, then it would certainly help to show that the registered trademark now belongs to the new owner.

How to search USPTO trademark assignments

The USPTO enables the public to search trademark assignment records online by reel/frame number, serial number, registration number, international registration number, assignor name, assignee name, correspondent name, applicant name or domestic representative.

How to transfer a trademark with a renewal deadline approaching

Should you transfer a trademark regisration first, and then file the renewal of behalf of the new owner? Or, renew first on behalf of the old owner, and transfer the registered trademark? It all depends on whether the old owner or new owner is making use of the mark at the time the renewal is filed.

What should the new trademark owner do?

The assignee should be diligent in tracking any deadlines for responding to outstanding Office Actions and renewing any registered marks. Typically, this can be forwarded to an experienced IP firm who will easily docket all relevant deadlines of the transferred trademark filings.

A transferred trademark application or registration should not be regarded in the same way as a transferred patent, which does not impose an obligation on the patent owner to use the patent. Trademark owners have an ongoing obligation to use the transferred trademark on the pertinent goods or services identified in the trademark filings. Ceasing the use of the marks on the relevant goods or services could jeopardize rights in the transferred marks.

What if the owner is the same, but the company has changed its name?

If the trademark owner is the same entity with a different name, the trademark owner should record a name change with the USPTO. An assignment cover sheet should be added to a copy of the corporate documents reflecting the name change, which will all be submitted to the USPTO. Be careful not to think of a different entity as merely a name change. For example, if your old company was an LLC and you formed a new corporation, those are two different entities. A trademark assignment would be required to transfer trademarks from the LLC to the new corporation.

Need to transfer a trademark application or registration?

An  experienced trademark attorney  can help you properly transfer a trademark filing. Email me at  [email protected]  or  call (949) 223-9623  to get started on transferring ownership of a trademark.

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Navigating the world of trademarks is a crucial aspect of protecting your business's brand and identity. When you own a trademark , you have exclusive rights to a particular name, logo, or symbol that distinguishes your goods or services from others. However, there may come a time when you need to transfer these rights to another entity, a process known as a trademark assignment . This article will guide you through the intricacies of assigning a trademark, from understanding its importance to the steps involved, the legal aspects, and the role of professional assistance in ensuring a smooth transition.

How to Assign a Trademark

Trademark Assignment: Definition and Significance

At its core, a trademark assignment is a legal act of transferring ownership rights of a trademark from one party, the assignor, to another, the assignee. In this process, the assignor relinquishes all rights, titles, and interest in the trademark, effectively handing them over to the assignee.

The importance of trademark assignment cannot be overstated. It provides businesses with financial flexibility and opportunities. For instance, if a company no longer wishes to use their registered trademark, they can monetize it by selling or assigning it to another business that finds it valuable, thereby leveraging the brand equity built over time.

For the buyer, acquiring an established trademark can accelerate brand recognition and customer trust, facilitating a quicker market presence. This approach is often adopted during mergers and acquisitions to fortify the brand's strength and provide a comprehensive range of services under a single, unified trademark. This strategy is particularly prevalent in sectors where brand reputation significantly influences customer choice.

Furthermore, trademark assignment encourages the efficient use of intellectual property. It enables trademarks to be exploited by those who recognize their maximum potential and are willing to invest resources to boost their market visibility and reputation. Therefore, trademark assignment plays a pivotal role in the dynamic growth and development of businesses.

Understanding the Trademark Assignment Process

Transferring a trademark from one owner to another, known as trademark assignment, is a process that requires careful attention to detail. This process is designed to establish a clear line of ownership, helping to prevent potential legal disputes down the line.

At the outset, it's vital to clearly identify both the assignor (the original owner of the trademark) and the assignee (the new owner). This includes providing specific details such as the names of the parties involved and their respective addresses, which helps to avoid any potential confusion.

Equally important is the accurate definition of the trademark being assigned. This involves detailing the trademark's name or logo, registration number, date of registration, and the specific goods or services it represents. Any inaccuracies in this information could lead to the assignment being invalidated at a later date.

The next step is to outline the terms and conditions of the trademark assignment agreement. This legal document outlines the rights and responsibilities of both parties, including the scope of the assignment and whether it includes goodwill. It's crucial that this agreement is carefully drafted to ensure all parties are on the same page.

After the agreement has been drafted, it must be signed by both the assignor and assignee, preferably in the presence of a notary. The final step is to file the trademark assignment with the appropriate Intellectual Property Office, which makes the assignment official and part of the public record.

While the process may seem straightforward, it's important to remember that any mistakes or inaccuracies can lead to the assignment being invalidated. Therefore, it's crucial to approach the process with a high level of professionalism and attention to detail.

Preparing and Submitting a Trademark Assignment

Preparation and submission are key stages in the trademark assignment process. Any missteps during these stages could result in the assignment being invalidated, potentially leading to legal issues down the line.

The preparation stage involves drafting a detailed trademark assignment agreement. This document outlines the terms of the transfer, including the rights and responsibilities of each party and the scope of the assignment. It should also specify whether the assignment includes goodwill.

When drafting the agreement, it's crucial to provide a thorough description of the trademark being assigned. This includes the trademark's registration details, such as its number and date, as well as the goods or services it represents. Providing this level of detail helps to ensure clarity and prevent potential disputes in the future.

Once the agreement has been drafted and signed by all parties, it's time to submit it to the appropriate Intellectual Property Office. This office needs to be informed of the change in ownership in order to officially recognize the assignment. This involves submitting the agreement, an application for registration of title under the new owner, and the required fees.

The process of getting a trademark assignment recognized can take several weeks or even months, depending on the workload of the office and the complexity of the application. It's important to be patient, keep up with any necessary follow-ups, and ensure the office has all the information it needs to process the assignment efficiently.

Understanding the Legalities of Transferring a Trademark

Transferring a trademark is not just a simple transaction. It involves several legal intricacies that uphold the integrity of intellectual property rights. Grasping these legalities is crucial to avoid missteps that could lead to severe repercussions.

The agreement that facilitates the transfer of a trademark from the original owner to the new one is a legally binding document. It's of utmost importance that this agreement is drafted meticulously and accurately. Any errors in the document can render the transfer invalid or spark legal disputes. Furthermore, any deliberate or accidental provision of false information can lead to serious legal consequences, including potential fraud charges.

Understanding the terms of the agreement is another critical legal aspect. Misinterpretation or misunderstanding of these terms can lead to breaches and subsequent disputes after the transfer. For example, if the agreement specifies that the new owner cannot license the trademark to others without the original owner's consent, any attempt to do so would be a breach of the agreement, which could lead to legal repercussions.

It's a legal obligation to file the trademark transfer with the relevant Intellectual Property Office. If this step is skipped, the transfer will not be officially recorded or acknowledged, leaving it susceptible to challenges. This could also impact the new owner's right to use the trademark and take legal action in case of infringement.

The legal complexities involved in transferring a trademark require a thorough understanding of intellectual property law. It's highly advisable to seek legal help to ensure the process is executed correctly and in compliance with all legal requirements.

Post-Transfer Responsibilities

After a trademark has been successfully transferred, the new owner has several important responsibilities to ensure the trademark's continued protection and validity.

A crucial initial step is to maintain the trademark's protection. This includes using the trademark regularly in business operations and renewing it on time. Failure to do so could result in the trademark being cancelled for non-use or expiring due to missed renewal deadlines.

Another key responsibility is to guard against potential infringements. The new owner must actively monitor the market to prevent unauthorized use of the trademark. This could involve using watching services that alert the owner of potential infringements or conducting regular market audits.

If an infringement is detected, the new owner must be ready to take legal action immediately. This emphasizes the importance of keeping detailed records of the trademark transfer, which can serve as proof of ownership in potential disputes.

Lastly, the new owner must comply with the obligations outlined in the trademark transfer agreement. This could include adhering to certain quality standards or avoiding transfer to specific parties.

Post-transfer responsibilities are vital to maintaining the trademark's integrity and value. The new owner must be dedicated to preserving the trademark's strength, relevance, and legal protection, ensuring it continues to fulfill its role in its respective market.

Understanding the Intricacies of Trademark Assignment Agreements and Common Filing Errors

When transferring ownership of a trademark, a trademark assignment agreement serves as the cornerstone. This contract delineates the responsibilities and rights of both the assignor, who is the original owner of the trademark, and the assignee, the new owner. A well-drafted agreement can help avert potential conflicts by ensuring all parties are on the same page regarding their roles and obligations.

Key components of a standard trademark assignment agreement include a comprehensive description of the trademark, clarity on the scope of the assignment, accurate identification of the parties involved, pertinent dates, warranties, and a clear indication of whether the assignment includes the goodwill associated with the trademark.

Despite the importance of these agreements, errors in their preparation and filing are not uncommon. These mistakes often stem from a lack of understanding or awareness of trademark law. Misidentifying the parties involved, leaving out essential clauses, misunderstanding the scope of the assignment, and neglecting to record the assignment with the appropriate intellectual property office are some of the most common errors. These oversights can lead to disputes over the assignment, infringement on the rights of the parties involved, or even the nullification of the assignment.

For example, if the assignor is inaccurately identified in the agreement, it can lead to confusion and potential conflicts if the assignor later disputes the sale of the trademark. Similarly, if the assignment excludes the transfer of goodwill, but the assignee uses the trademark in a way that suggests a connection with the assignor's goodwill, this could result in liability for trademark infringement or passing off.

To circumvent these potential issues, it's highly recommended to seek professional legal advice when drafting and filing trademark assignment agreements. This ensures the information is accurate and complete, the execution is valid, and any legal complications arising from filing errors are avoided.

Understanding the Legal Ramifications of Incorrect Trademark Assignment and Misinterpretation of Agreement Terms

Incorrect execution of a trademark assignment or misunderstanding the terms of the agreement can lead to serious legal consequences. This is because a trademark assignment represents the transfer of a valuable property right that carries with it several legal obligations.

Incorrect assignments typically involve errors in the trademark assignment agreement or filing process. These can include mistakes in identifying the parties or the trademark, omitting essential clauses, and failing to register the assignment with the appropriate Intellectual Property Office. Such errors can result in a range of legal problems, including the nullification of the assignment, legal liability, and potential litigation.

For example, if the assignment does not properly transfer the goodwill associated with the trademark, it may lead to its nullification. This usually happens if the assignment agreement is deemed a bare or naked assignment, resulting in the assignee losing their rights.

Misinterpretation of the agreement terms can also have legal consequences. If a clause restricts the use or sublicensing of the trademark without the assignor's consent, and the assignee ignores this term, it may lead to a breach of contract. This could result in legal actions, including claims for damages, injunctions, or even termination of the agreement.

Given these potential legal ramifications, it's crucial to ensure the proper execution and understanding of a trademark assignment. Both assignors and assignees are strongly encouraged to involve legal professionals specializing in intellectual property law to guarantee a legally sound and smooth process.

Why Professional Assistance is Crucial in Trademark Assignment

Assigning a trademark is a multi-step process, laden with potential legal intricacies and challenges. This is where the importance of professional assistance comes into play. It ensures a smooth assignment process and protects the rights associated with the trademark.

Trademark attorneys, with their deep understanding of intellectual property laws, industry norms, and contractual agreements, are particularly beneficial. They help craft a comprehensive trademark assignment agreement, covering all necessary elements and protecting the interests of all parties. They also help avoid common filing errors, such as incorrect identification of parties or trademarks, inaccurate details, and missing essential clauses.

The role of professional assistance extends beyond the initial preparation and filing of the trademark assignment. They guide the assignee through post-assignment procedures, help maintain the trademark's protection, monitor the market for potential infringements, and ensure compliance with any obligations outlined in the assignment agreement.

In the event of disputes, having a legal professional by your side can expedite resolution and potentially save you from a drawn-out legal battle. They can guide you through the legal maze, suggest appropriate actions, and even represent you in court if necessary.

Furthermore, intellectual property laws are dynamic, changing in response to technological advancements, market trends, and legal interpretations. Professional assistance can help you stay ahead of these changes, ensuring your trademark assignment remains legally robust over time.

The Advantages of Hiring a Trademark Attorney and How to Choose One

Employing a trademark attorney during the assignment process comes with numerous benefits. These professionals, with their specialized knowledge of trademark law, ensure the assignment agreement is legally robust and free from errors. They can spot potential issues, suggest solutions, and ensure legal and procedural compliance.

Trademark attorneys assist in creating and reviewing the assignment agreement, making sure it's thorough and protects the rights of both the assignor and assignee. They also guide you through the official filing process, ensuring all documents are correctly prepared, filed on time, and properly recorded with the intellectual property office.

After the assignment, a trademark attorney can monitor the use of the trademark and watch for potential infringements, thereby preserving the trademark's integrity. If disputes arise, having an experienced professional on your side can lead to quicker and more favorable outcomes.

However, these benefits depend on choosing the right attorney. The chosen professional should have a strong background in intellectual property law, preferably with a focus on trademarks. They should have a history of successful assignments, showing their ability to handle the process's complexities. Responsiveness and commitment to the client are also important. Moreover, the attorney should maintain high ethical standards, handling sensitive matters like legal documents and transfer of proprietary rights with utmost integrity.

Choosing the right trademark attorney can simplify the assignment process, preserve the trademark's value, and protect it from potential legal issues. They not only facilitate the transaction but also ensure its long-term success and effectiveness.

1. What are the key steps to assigning a trademark?

The assignment of a trademark involves several important steps: it begins with the owner deciding to transfer the rights, drafting an assignment agreement, confirming the assignee's willingness, filing the paperwork with the U.S. Patent and Trademark Office (USPTO), and finally paying the requisite fees.

2. Can a trademark be assigned along with the associated goodwill of the business?

Yes, trademarks can be assigned along with the goodwill of the business. In fact, as per the law, trademarks typically should be assigned with the related goodwill, which encompasses a business' positive reputation and customer relations.

3. Is it necessary to record an assignment of trademark with USPTO?

Yes, recording the assignment with the USPTO is crucial. This recordal ensures the public notice of the assignment and helps in establishing a legal chain of title for the trademark.

4. Are there any filing fees for recording the assignment of a trademark?

Yes, accrue some fees when filing the trademark assignment with the USPTO. As of now, the fee is $40 per international class for electronic filing.

5. What are the consequences of failing to record a trademark assignment?

Failure to record a trademark assignment may lead to legal disputes about the ownership of the trademark. Moreover, the subsequent assignee may have defective title if the assignment is not recorded with the USPTO.

6. Can a trademark be partially assigned to another party?

Yes, a trademark can be partially assigned. For example, the rights may be transferred for specific products or services, or for use in specific geographical areas, while the original owner retains the rest of the rights.

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Trademark Center beta is here

Trademark Center beta

We launched Trademark Center beta, a new system designed to improve your filing experience. You can use the beta version of Trademark Center to apply to register your trademark. You have the option to apply to register your trademark in either Trademark Center beta or the Trademark Electronic Application System (TEAS) until early January 2025. The cost to file remains the same in both systems.  

For more information, visit our Trademark Center page .

Index of all TEAS forms

See below for a listing of all forms within a specific category. To access a form, select the form name.

To look at the forms prior to accessing the electronic version in the list below, see the form previews . Do not attempt to file the PDF version. It is for informational purposes only and not for submitting the form. 

Log in to access forms

To access TEAS and TEASi forms, select a form listed below. If you are not already signed into MyUSPTO using your USPTO.gov account, then you will be prompted to log in with two-step authentication.

For the latest information or to create a USPTO.gov account, review the Log in to TEAS and TEASi page .

Be cautious about anyone contacting you about your trademark. Your contact information, trademark details, and application status are publicly viewable on our systems. Scammers and private companies often use it to call, mail, or email you with trademark-related solicitations and scams. This may include posing as the USPTO. See recognizing common scams to learn how you can protect yourself. 

Initial Application Form

• TEAS Plus/TEAS Standard Application
• Trademark/Servicemark Application, Supplemental Registe r
• Certification Mark Application, Principal Register
• Collective Membership Mark Application, Principal Register
• Collective Trademark/Servicemark Application, Principal Register

Response Forms

• Response to Office Action Form
• Request for Reconsideration after Final Office Action Form
• Response to Suspension Inquiry or Letter of Suspension
• Request for Extension of Time to file a Response (Trademark Application)
• Response to Intent-to-Use (ITU) Office action
• Response to Post-Registration Office action
• Response to Petition to Revive Deficiency Letter
• Response to Petition to Director Inquiry Letter

Intent-to-Use (ITU) Forms

• Statement of Use/Amendment to Allege Use for Intent-to-Use Application
• Request for Extension of Time to File a Statement of Use
• Respond to an Intent-to-Use Unit Office action

Extension Request Forms

• Request for Extension of Time to File a Response (Trademark Application or Expungement or Reexamination Proceeding)

Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Forms

• Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form
• Request to Delete Section 1(b) Basis, Intent-to-Use

Correspondence and Attorney/Domestic Representative Forms

• Change Address or Representation (CAR) Form
• Withdrawal of Attorney

Petition Forms

• Petition to Revive Abandoned Application - Failure to Respond Timely to Office Action
• Petition to Revive Abandoned Application - Failure to File Timely Statement of Use or Extension Request
• Petition to Director
• Petition to make Special
• Request to Restore Filing Date
• Request to Make Special
• Request for Reinstatement
• Petition to Change the Filing Basis After Publication
• Letter of Protest
• Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services after NOA
• Petition to Director to Review Denial of Certification of International Application
• Petition to Director for an International Application/Registration

Expungement or Reexamination Forms

• Petition for Expungement or Reexamination
• Response to a Post-Registration office action
• Request for Extension of Time to File a Response (Expungement or Reexamination Proceeding)  

Miscellaneous Forms

• Voluntary Amendment Not in Response to USPTO Office Action/Letter
• Request for Express Abandonment (Withdrawal) of Application
• Request to Divide Application
• Order Trademark Presentation Copy of Registration Certificate  

Registration Maintenance/Renewal Forms

• Combined declaration of use & incontestability under Sections 8 & 15
• Declaration of Use and/or Excusable Nonuse of a Mark under Section 8
• Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9
• Declaration of Incontestability of a Mark under Section 15
• Section 7 Request for Amendment or Correction of Registration Certificate
• Surrender of Registration for cancellation
• Request to Divide Registration
• Section 12(c) Affidavit
• Declaration of Use and Excusable Nonuse under Section 71
• Combined declaration of use & incontestability under Sections 71 &15

Assignment Forms

• Assignments
• Change of name
• Other conveyances of title

You can file your assignment online through Assignment Center at https://assignmentcenter.uspto.gov .

Trademark Trial and Appeal Board Forms

• Request for Extension of Time to File an Opposition
• File a New Proceeding (Notice of Opposition; Petition for Cancellation; Appeal of Refusal to Register)
• File Documents in an Existing Board Proceeding

You can file your TTAB submissions online through the Electronic System for Trademark Trial and Appeals (ESTTA) at https://estta.uspto.gov/ .

Madrid Protocol Forms

• Application for International Registration
• Subsequent Designation
• Response to a Notice of Irregularity
• Replacement Request
• Transformation Request
• Combined Declaration of Use & Incontestability under Sections 71 & 15
• Petition to Director for an International Application/Registration

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Assignment of Trademark

Updated on : Jun 14th, 2024

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment  

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc. 

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand  ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business  

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor. 

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business  

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

• The trademark assignment should be in writing.
• The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
• The assignor should have the intent and must consent for the trademark assignment.
• The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

• The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
• The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
• The agreement should show a clear purpose of the transaction/assignment.
• The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
• The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
• The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
• The signatures and witnesses must be mentioned.
• The place and date of agreement execution must be mentioned.
• The date and day of the assignment along with the parties to the assignment must be mentioned.
• The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

• The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
• The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

• Trademark assignment agreement.
• Trademark certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

• The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
• The assignee obtains the rights of an already established brand due to trademark assignment.
• The trademark assignment supports the assignor and the assignee to expand their respective businesses.
• The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

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Mayashree Acharya

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