trademark transfer (or assignment) agreement

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

• I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
• I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: 

• A critical piece of information was omitted from the cover sheet. 
• The document is illegible or not scannable. 
• The information on the cover sheet and the supporting document do not match. 
• The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

• Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
• Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

• Go to TSDR .
• Enter the application serial number or registration number.
• Select the “Status” button.
• Scroll down to the “Current Owner(s) Information” section. 
• Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

• If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
• If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
• If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

Additional information about this page

How does it work?

1. choose this template.

Start by clicking on "Fill out the template"

2. Complete the document

Answer a few questions and your document is created automatically.

3. Save - Print

Your document is ready! You will receive it in Word and PDF formats. You will be able to modify it.

Trademark Assignment

Rating: 4.8 - 30 votes

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).

How to modify the template:

You fill out a form. The document is created before your eyes as you respond to the questions.

At the end, you receive it in Word and PDF formats. You can modify it and reuse it.

A guide to help you: How to Register A Trademark

Other names for the document:

Agreement to Assign Brand, Assignment for Trademark, Brand Assignment, Intellectual Property Assignment Agreement, Logo Assignment

Country: United States

Intellectual Property and New Technologies - Other downloadable templates of legal documents

• Terms and Conditions for a Website
• Non-Disclosure Agreement (NDA)
• Privacy Policy For Website Or Mobile App
• Copyright Assignment
• Intellectual Property Permission Letter
• Intellectual Property Release Form
• Intellectual Property Cease and Desist Letter
• Model Release Form
• Personal Data Deletion Request
• Licensing Agreement
• Influencer Agreement
• Online Advertising Agreement
• Online Sponsorship Agreement
• Website or Mobile Disclaimer
• Media Release Agreement
• Graphic Design Agreement
• Affiliate Agreement
• Refund Policy
• Testimonial Release
• Copywriting Agreement
• Other downloadable templates of legal documents

Cueto Law Group P.L.

Business Law Attorneys for All Your Business Needs

• Business Law
• Business Litigation
• Contracts & Agreements
• Corporate Law
• International Litigation & Arbitration
• Intellectual Property
• Medical Partnership Disputes
• Free Resources
• Representative Cases
• Why Hire Us
• Testimonials

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. Your Florida trademark lawyer 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.

786 625 7099

Ez fat footer #1.

This is Dynamik Widget Area. You can add content to this area by going to Appearance > Widgets in your WordPress Dashboard and adding new widgets to this area.

• Privacy Policy

Fax: 305.777.0397

Trademark Transfer: Everything You Need To Know

A trademark transfer occurs when the rights to a trademark are sold or licensed from one owner to another which can be done on a temporary or permanent basis. 3 min read updated on February 01, 2023

A trademark transfer occurs when the rights to a trademark are sold or licensed from one owner to another. This can be done either on a temporary or permanent basis.

Trademark Assignment

When the ownership of a mark is permanently transferred to another person or business, it is called assignment. Types of trademark assignment include:

• Complete assignment, in which all rights to the trademark are transferred to a third party. This includes the rights to collect royalties or reassign the rights to another individual or business.
• Partial assignment, in which only the trademark for a specific product or service is transferred. In this case, the owner retains the rights to the company's main intellectual property but assigns the trademark rights to one aspect of the business.
• Assignment with goodwill means that the trademark rights are transferred for the purpose of manufacturing the product in question.
• Assignment without goodwill occurs when the trademark use is restricted to a specific product or service that are not similar to those sold by the original company. Although this is allowed in certain countries, such as India, it is not considered valid in the United States.

The Process of Trademark Transfer

When a trademark is transferred, this transaction must be documented by an agreement between the parties as well as by filing the appropriate forms with the U.S. Patent and Trademark Office (USPTO). The agreement in question is called a trademark assignment agreement or trademark transfer agreement.

The agreement should completely detail the terms and conditions of the transfer, including payment, the level of assigned rights, the trademark's USPTO registration number, any current registration warranties that will be transferred to the new owners, and documentation that the assigning party fully owns the rights he or she is transferring.

Once this agreement is signed by both parties, you can record the transfer with the USPTO using a simple online form . You will also need to send in a copy of the executed transfer agreement. With online filing, the transfer is typically processed within one business day. The filing fee for this service is $40. You can also file by mail, which will take about a week to process.

If you do not register the transfer with the USPTO and the new owner of the trademark then infringes on another party's trademark, you may be implicated in the dispute since you are still federally registered as the owner of the trademark. For this reason, you may want to consult an experienced intellectual property attorney to make sure the process is completed correctly.

On the other hand, if you are the party purchasing rights to a trademark, the owner can later sue you for ownership of the mark if he or she fails to properly record the transfer . Again, it's best to consult an attorney whenever you are involved in trademark assignment.

The Role of Trademark Goodwill

Goodwill refers to the brand reputation directly associated with the trademarked goods or services. If you don't plan to use the trademark to promote those goods or services, the mark itself has no inherent value. For this reason, sales of a trademark that do not include transfer of goodwill are not considered valid. This prevents the person who is buying the trademark from being misled about what he or she is actually purchasing.

The trademark assignment agreement must indicate that the sale includes all goodwill associated with the mark. This is governed by 15 U.S. Code 1060(a)(1), which states “A registered mark or a mark for which an application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark.”

Goodwill transfer does not necessarily entail transfer of any tangible assets. However, the mark must be used on similar products or services as those already associated with the mark. Otherwise, this could be legally construed as an attempt to defraud the consumer by providing different and possibly inferior products. This requirement must be explicitly stated in the trademark assignment agreement.

If you need help with trademark transfer, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• USPTO Trademark Assignment: Everything You Need To Know
• Selling Trademarks
• Trademark Assignment Recordation
• Trademark Law
• Benefits of a Trademark
• Suing for Trademark Infringement
• Trademark Registration
• Trademark Requirements
• Dead Trademark: Everything You Need To Know
• Benefits of Registering Trademark

• 917-551-5537
• [email protected]
• [email protected]
• PATENT INTERNATIONAL
• TRADEMARK INTERNATIONAL

The last thing you want, as a business owner or entrepreneur, is to find yourself remaking or editing the transfer trademark ownership agreement repeatedly. It’s a meticulous task, and even a tiny oversight can lead to legal complications. 

However, with the right knowledge and guidance, navigating the process and successfully transferring trademark ownership can become easy. At the end of this guide, you will be armed with all the knowledge to maximize your chances of smooth trademark transfers.  

So, let’s get started! 

What is Trademark Ownership Transfer?

Trademark ownership transfer is the process of transferring the rights of intellectual property from the current owner to a new owner.

There are several situations where business owners must transfer their trademarks. These involve the sale of a business, a merger or acquisition, a change of the business’s name or structure, or licensing (granting others the right to use a trademark).

Legal Implications of a Trademark Transfer

During trademark transfer, you need to take care of a number of formalities to avoid any legal issues. 

For example, an agreement is first created listing the terms and conditions of the transfer. These include levels of assigned rights, payment of the trademark transfer, rights of the new owner, trademark number, etc. And then it also needs to be registered with the USPTO . 

Similarly, there are several legal implications that can vary according to the different circumstances surrounding the transfer. Failing to address these legalities can create confusion in determining who is the actual owner of the trademark and ultimately makes it more difficult for future trademark infringement.  

When the transfer is not properly done, and legal documents show multiple trademark owners, it can dilute the trademark or decrease its proprietary value. On the other hand, it will also increase the cost of transferring.  

Understanding the Trademark Transfer Terms

Making well-informed decisions when transferring a trademark can be challenging if you lack knowledge of the terms used in the process. Here are some of the most commonly used ones:

Assignment: Assignment refers to the transfer of complete ownership and rights of a trademark from the assignor (current owner) to the assignee (new owner). In the assignment, the assignee becomes the sole owner of the trademark, is responsible for it, and has all the rights to use it.

Licensing: Licensing means sharing, where the owner (assignor) grants permission to another party (licensor) to use their trademark under decided terms and conditions. In licensing, the licensor has the authority to carry out actions that the law wouldn’t allow otherwise.

Pre-Transfer Considerations

To ensure a successful trademark ownership transfer, it’s crucial to consider several factors that will significantly impact the process. The following are some of the pre-transfer considerations you shouldn’t oversee. 

Determining the value of a trademark: A fair valuation of your trademark will help you determine the right negotiation price for your intellectual property. 

Possible impact on brand reputation and business operations: It’s essential to carefully evaluate how trademark transfer will affect your brand image, customer loyalty or perception, and business operations.

Legal consultation and advice: Legal consultation is beneficial in making well-informed decisions because an experienced attorney can provide valuable insights, best practices, and potential risks associated with transferring. 

Step-by-Step Process to Transfer Trademark Ownership

Many business owners face common questions during the transfer process, including “How to transfer trademark ownership?” or “Can I transfer ownership of a trademark?” Both queries are important and deserve proper attention. 

The answer to these lies behind the curtain of following the right method. A successful trademark ownership transfer involves many important steps that ensure a smooth transition while fulfilling all legal requirements. 

Here’s a step-by-step breakdown for your help:

1. Drafting an Assignment Agreement

The assignment agreement binds the current owner to the new owner and defines the terms and conditions of the transfer. It’s important to thoroughly research the market and understand your business conditions before you draft this document.

2. Review and Negotiation

Once you are done drafting the agreement, reviewing it and clearly negotiating terms with both parties is recommended. This step ensures both parties understand the terms and have mutually agreed on them.

3. Execution of the Agreement

The next step to transferring a trademark is the execution of the agreement, which involves both parties signing the agreement and confirming their consent to the trademark change of ownership.   

4. Record the Assignment with the United States Patent and Trademark Office (USPTO)

To legally protect the rights of new trademark ownership, recording the assignment with the United States Patent and Trademark Office (USPTO) is crucial. 

You can record the assignment with the USPTO by mailing them a recordation cover sheet with the original or certified copy of the assignment agreement. Or you can electronically do it through the USPTO’s Electronic Trademark Assignment Systems (ETAS).

Once recorded, you will receive a certificate with an official registered number assigned to the trademark. It will allow you to use the ® symbol, notifying people that the trademark is protected and registered with the USPTO. 

Failure to record the assignment with the USPTO means you are not the legal owner of the trademark, and the assignor can still claim ownership of the trademark. Ultimately, it will lead to confusion, disputes, and potential risks to brand image.

5. Notify Interested Parties

Once you have recorded the assignment with the USPTO, it’s crucial to notify the other parties regarding the trademark change of ownership. You should also notify customers, related entities, and licensing authorities.

Clear and timely notifications reduce confusion and false infringement claims. Moreover, it also helps stakeholders update their records. The proper notification shows professionalism and builds trust with consumers.

Post-Transfer Considerations

After you have successfully transferred trademark ownership and properly notified the interested parties, it is crucial to act on post-transfer considerations to ensure the future protection of your brand.

Maintain the strength of your trademark by regularly monitoring possible infringement and claiming it. Through this, you can ensure the proactive security of your intellectual property and the proper use of the trademark associated with it.  

Importance of Trademark Ownership Transfer

A trademark ownership transfer is crucial for your business, as it offers a number of benefits, including: 

Protects brand identity: A trademark is the visual representation of any brand, and transferring it legally preserves the brand image and prevents dilution.

Brings licensing opportunities: Proper trademark ownership helps bring licensing opportunities and expand into new markets.

Avoid disputes: With a successful transfer, you reduce the risk of false claims that can adversely impact your brand’s identity. 

Helps in expansion: If you plan to expand internationally, proper trademark transfer helps meet the legal requirements of the target country.  

Starting with drafting the assignment agreement, reviewing, negotiating, executing, and then submitting it to the USPTO, we can say that transferring trademark ownership can be complex. However, following through it carefully is crucial for a successful process.

Therefore, we recommend seeking legal advice from a renowned intellectual property attorney who specializes in transferring trademark ownership. So you face no legal consequences that may arise due to improper transfer. 

Professional legal agents can provide you with expert guidance for your specific circumstances of transferring ownership so everything goes smoothly.

Frequently Asked Questions

The process for registering a trademark varies from country to country. To file for a trademark in the US, you can file an online application with the USPTO. The USPTO entertains two types of applications: ‘In-use’ and ‘Intent to use’. The online application is known as Trademark Electronic Application System (TEAS).

Just like every country has its own registration process, the cost varies as well. Depending on the legal fees and the length of the process, the cost can go up or down. In the US, the price of registering a trademark ranges from $500 to $3000.

You need to file an application which should contain: your name and address, if it’s a business then the type of legal entity it is, details of the trademark, list of goods and services, the details of the class(es). 

Yes, you can file for both: a local and an international trademark. Some countries entertain a single application to register a trademark locally as well as internationally. 

Yes. It is possible to register a trademark in multiple countries with a single application but it depends on which union the country is part of. You can do this through the Madrid Protocol or EUIPO. 

Countries have different laws regarding what can be registered as a trademark. In the US, the types of trademarks that can be registered are slogans, shapes, names, phrases words, images, 3D shapes, holograms, smells, and colors.

" * " indicates required fields

Subscribe to Newsletter

Get latest news, updates and offers directly at your inbox. Subscribe for our newsletter today!

Trademark International offers a wide range of trademark services to cater to all of your registration needs, ensuring a hassle-free process. At Trademark International, we provide you value through our global reach and expert attorneys for your international trademark search, trademark filing, trademark renewal, and international patent registration needs at the best possible price!

Our offering

• International Trademark Search
• International Trademark Filing
• International Trademark Annuities
• Patent Center
• Learning Center

Important Links

• Country Wise Information

• Philippines

Your ideas are safe Patent International, a global network of patent and trademark experts ready to hear from you.

• International Patent Search
• International Patent Translation
• International Patent Filing
• International Patent Prosecution
• International Patent Annuity
• Country Information

Copyrights 2022 © All rights Reserved.

Our Services

• International Patent Search Services

Patent Countries

• South Korea

Middle East

• Saudi Arabia
• European Union
• United Kingdom
• New Zealand
• South Africa

At Trademark International, we offer a range of trademark services to suit all your needs. Our global reach and expert attorneys provide efficient international trademark search, filing, renewal, and registration.

Trademark Countries

> madrid protocol.

Trademark Attorneys Trusted For Our Experience®

Changing Owners of a Trademark Registration (Trademark Assignments)

In order to change the owner of a trademark registration  a document called a “trademark assignment” must be filed with the United States Patent and Trademark Office (USPTO).

While the filing itself may seem simple, it is incredibly important that it is drafted correctly and that there is a clear “chain of title” from the Assignor to the Assignee. A mistake in this process could result in the cancellation of the entire registration.

We offer a flat fee service to change ownership of a trademark. The service includes:

• Assessing the change of ownership to ensure it is being done properly and in accordance with federal trademark laws.
• Assisting with the creation of a detailed written assignment agreement.
• Filing the assignment with the USPTO, along with any required documentation or fees.
• Monitoring the processing of your assignment.
• Dealing promptly with questions or issues that may arise from the USPTO.

When you do you need a trademark assignment?

A trademark assignment is required in the case of:

• Transfer of ownership to a different company. A normal Asset Purchase Agreement typically does not properly transfer the associated trademark registrations.
• A change in your business entity. An example would be a conversion from an LLC to a corporation.
• A legal name change. If the legal name of a trademark owner changes – whether it is an individual or a business – the USPTO must be notified.

In the case of transfer of ownership to a new company, you are not merely transferring the right to use the name. You are transferring the underlying goodwill that the trademark represents to a business. If you do not transfer this underlying goodwill , the new owner will not be able to take advantage of your past use of the name and claim it as its own.

The different types of trademark assignments

Registered trademark assignments When transferring the ownership of a registered trademark to a different company, the USPTO requires a written agreement called a “Trademark Assignment.” This is a detailed document that provides necessary information for a successful transfer of ownership, ensuring that the trademark’s underlying goodwill is transferred to the new trademark owner.

Intent-to-use trademark assignments If your application is based on “intent-to-use” (meaning that your trademark is not yet in use), extra care has to be taken with your trademark assignment. This is because the USPTO prohibits the “trafficking of trademarks.” In other words, the USPTO does not want entities to file trademark applications solely for the purpose of selling them off. Therefore, the only way to transfer a trademark based on an “intent-to-use” is to transfer the entire business associated with that trademark to the new owner. The situation involves nuances that would benefit greatly from the participation of an experienced trademark attorney .

Corporate name changes or conversions Once the written Trademark Assignment is completed, the next step is filing a request online with the USPTO through its Electronic Trademark Assignment System (ETAS). However, the fact that the USPTO accepts the filing does not mean that it is valid. The associated documentation must match USPTO requirements, or the filing could be rejected. For example, when a trademark is not properly assigned to the new company, the USPTO will refuse the Assignment. The new owner will not be able to claim the rights until a new, corrected filing is made. The online form asks for the applicable trademark assignment option, the nature of the trademark’s change of ownership, plus additional information. You’ll pay any applicable fees and upload documentation including a cover sheet detailing the nature of the ownership change.

The benefits of using Gerben IP for changing the owner of your trademark registration

• Rigorous attention to detail. We understand the meticulous requirements and nuances involved in a successful trademark assignment filing.
• Accuracy and reliability. A poorly worded Trademark Assignment or incorrectly filed documentation can put a change of trademark ownership in jeopardy. We’ll file the necessary documentation accurately and on time.
• Skill and experience. Our attorneys have successfully transferred rights for hundreds of trademarks since 2008.

Not only is it important to properly transfer the ownership of a trademark, it is also crucial to correctly determine who should own a trademark. For more information on who should own a trademark, check out the video below.

Do you need assistance with a trademark assignment?

Trademark Assignment Agreement

Jump to section.

A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the terms and conditions of the transfer.

A properly executed trademark assignment agreement can help ensure that the new owner has full legal rights to use, sell, or license the trademark while protecting the interests of the original owner. This type of agreement is commonly used in business transactions such as mergers and acquisitions, where trademarks are often valuable assets.

Essential Elements of a Trademark Assignment Agreement

A trademark assignment agreement in California must meet certain requirements to be legally binding and enforceable. Here are some of the essentials of a trademark assignment agreement in California:

The agreement must identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement must clearly state that the current owner (assignor) is transferring ownership of the trademark to the new owner (assignee). It should also state that the assignor has the legal right to transfer trademark ownership.

The agreement should specify the consideration that the assignee provides in exchange for transferring the trademark. It can be a monetary payment or other valuable consideration.

The agreement should contain representations and warranties by both the assignor and assignee, such as the assignor's ownership of the trademark and the assignee's ability to use and exploit the trademark.

The agreement should include a provision for the assignment of goodwill associated with the trademark, which refers to the intangible value of the trademark's reputation and customer loyalty.

The agreement may also include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others.

The agreement must be signed by both the assignor and assignee and should include the date of execution.

Overall, a trademark assignment agreement in California should be clear, concise, and comprehensive and accurately reflect both parties' intentions.

Importance of a Trademark Assignment Agreement

A trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. Here are some reasons why a trademark assignment agreement is important:

A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark.

A trademark is a valuable asset representing a business's goodwill and reputation. A properly executed trademark assignment agreement helps to protect the assignee's investment by ensuring that they have the legal right to use and exploit the trademark.

A trademark assignment agreement can help avoid confusion and disputes over trademark ownership. It provides a clear record of the transfer of ownership and can be used as evidence in case of any legal disputes.

A trademark assignment agreement can enable the assignee to license the trademark to others. It can be a valuable source of income for the assignee and help increase the trademark's value.

A trademark assignment agreement is often used in business transactions such as mergers and acquisitions, where trademarks are a valuable asset. It helps to ensure that the transfer of ownership is legally valid and provides a clear transaction record.

Overall, a trademark assignment agreement is an important legal document that helps to protect the interests of both the assignor and assignee. It provides a clear record of the ownership transfer and can help avoid confusion and disputes over ownership of the trademark. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Common Mistakes to Avoid in Trademark Assignment Agreement

When drafting or executing a trademark assignment agreement in California, several common mistakes should be avoided to ensure the agreement is legally valid and enforceable.

The agreement should identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement should include all parties involved in transferring the trademark, including any successors or assigns. Failing to include all parties can result in a lack of clarity over who owns the trademark.

The agreement should specify the assignee's consideration in exchange for the trademark transfer. If the consideration is not accurately described, the agreement may be challenged as unenforceable.

The agreement should include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others. Failing to address these rights can result in a lack of clarity over the assignee's legal rights to use and exploit the trademark.

The agreement must be signed by both the assignor and assignee and should include the date of execution. Failing to obtain proper signatures can result in a lack of clarity over whether the transfer of ownership is legally valid.

Trademark law can be complex and nuanced. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Overall, it is important to carefully draft and execute a trademark assignment agreement in California to ensure it is legally valid and enforceable. Avoiding these common mistakes can help to ensure that the agreement accurately reflects the intentions of both parties and protects their legal rights.

Key Terms for a Trademark Assignment Agreement

• Trademark: It is a recognizable sign, design, or expression that identifies and distinguishes the source of a product or service from those of others.
• Assignor: The assignor is the party currently owning the trademark and transferring ownership to another party through the trademark assignment agreement.
• Assignee: The assignee is the party acquiring ownership of the trademark through the trademark assignment agreement.
• Goodwill: Goodwill is the intangible value associated with a trademark built up through the use and reputation of the mark in the marketplace.
• Consideration: It refers to the compensation or value exchanged between the assignor and assignee as part of the trademark assignment agreement. This can include monetary payment, goods or services, or other forms of value.

Final Thoughts on a Trademark Assignment Agreement

In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.

When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.

Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.

If you want free pricing proposals from vetted lawyers that are 60% less than typical law firms, click here to get started. By comparing multiple proposals for free, you can save the time and stress of finding a quality lawyer for your business needs.

Meet some of our Trademark Assignment Agreement Lawyers

Diana is a registered patent attorney and licensed to practice law in Florida and in federal courts in Florida and in Texas. For nearly a decade, Diana has been known as the go-to brand builder, business protector, and rights negotiator. Diana works with individual inventors, startups, and small to medium-sized closely held business entities to build, protect, and leverage a robust intellectual property portfolio comprising patents, trademarks, copyrights, trade dress, and trade secrets.

Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.

I am a startup veteran with a demonstrated history of execution with companies from formation through growth stage and acquisition. A collaborative and data-driven manager, I love to build and lead successful teams, and enjoy working full-stack across all aspects of the business.

I'm an employment lawyer. I counsel and represent employees in all professions, from hourly workers to doctors and executives, and all in between. I also counsel and represent employers in many aspects of employment law.

As an entrepreneur at heart, I enjoy working with business owners and executives on a variety of corporate matters, including mergers and acquisitions, corporate financing, corporate governance, public and private securities offerings, privacy regulation and early-stage corporate matters including formation. As a lawyer and business professional, I understand the value of providing personal service and focused legal answers to clients navigating a rapidly changing regulatory environment. Whether in Aerospace, Consumer Goods, or Technology, I find great success in work collaboratively with clients to strategical structure their business or implementing strategic growth-oriented financing opportunities.

Thaddeus W.

Experienced legal counsel to entrepreneurs, small businesses, and investors. Advising clients starting, buying, selling, operating, financing, and investing in businesses // U.S. Army Veteran // Ironman Triathlete, Marathoner, Open Water Swimmer, USAT Triathlon Coach // Lover of Dogs, Cribbage, Craft Beer, Bourbon, and Cigars

Licensed attorney in KY and Federally JD, 2006 University of Louisville MBA, 2006 University of Louisville BS, 2001 Berea College Licensed Title Agent Arbitrator and Certified Mediator Business Consultant Adjunct Professor, Law and Business

Find the best lawyer for your project

How it works.

Post Your Project

Get Free Bids to Compare

Hire Your Lawyer

Intellectual Property lawyers by top cities

• Austin Intellectual Property Lawyers
• Boston Intellectual Property Lawyers
• Chicago Intellectual Property Lawyers
• Dallas Intellectual Property Lawyers
• Denver Intellectual Property Lawyers
• Houston Intellectual Property Lawyers
• Los Angeles Intellectual Property Lawyers
• New York Intellectual Property Lawyers
• Phoenix Intellectual Property Lawyers
• San Diego Intellectual Property Lawyers
• Tampa Intellectual Property Lawyers

Trademark Assignment Agreement lawyers by city

• Austin Trademark Assignment Agreement Lawyers
• Boston Trademark Assignment Agreement Lawyers
• Chicago Trademark Assignment Agreement Lawyers
• Dallas Trademark Assignment Agreement Lawyers
• Denver Trademark Assignment Agreement Lawyers
• Houston Trademark Assignment Agreement Lawyers
• Los Angeles Trademark Assignment Agreement Lawyers
• New York Trademark Assignment Agreement Lawyers
• Phoenix Trademark Assignment Agreement Lawyers
• San Diego Trademark Assignment Agreement Lawyers
• Tampa Trademark Assignment Agreement Lawyers

ContractsCounsel User

PROPRIETARY INFORMATION AND INVENTIONS AGREEMENT

Location: delaware, turnaround: less than a week, service: contract review, doc type: trademark assignment agreement, page count: 3, number of bids: 1, bid range: $225, user feedback:, licensing agreement. help pitching to companies., location: georgia, turnaround: over a week, service: drafting, bid range: $1,500, related contracts.

• 93a Demand Letter
• Accounting Services Agreement
• Accounts Receivable Purchase Agreement
• Ad Agency Contract
• Adhesion Contract
• Advertising Services Agreement
• Agency Agreement
• Agency Contract

other helpful articles

• How much does it cost to draft a contract?
• Do Contract Lawyers Use Templates?
• How do Contract Lawyers charge?
• Business Contract Lawyers: How Can They Help?
• What to look for when hiring a lawyer

Want to speak to someone?

Get in touch below and we will schedule a time to connect!

Find lawyers and attorneys by city

• Professionals

Trademarks Trademarks

• Trademarks GO

Previous Results

Quick Links

• Start your Trademark Registration
• Respond to Trademark Office Action
• Trademark Monitoring

Our Solutions

How to Transfer a Trademark

A trademark transfer occurs when the rights to a trademark are sold or licensed from one owner to another.  Such an agreement can be beneficial indeed to both the seller and buyer if structured properly. The trademark transfer can be organized so that the terms are governed on a temporary, contractual basis or permanently. A trademark transfer allows the transferor to further monetize his brand in ways that might not be readily available with current resources.  Trademark transfers are complex in that they can encompass a variety of formulations including full and/or partial trademark assignments.

How to Transfer a Trademark: Step by Step

Trademark transfers: understanding the trademark assignment vehicle.

Trademark Assignments Are Powerful

A trademark assignment is a legal tool by which an owner of a trademark may “assign” his rights and interest in a trademark or service mark to another. The  “Assignor”, or entity which transfers the mark to the new entity, or “assignee”, is accordingly compensated for the worth of the trademark.  Critically, assignments are not mere licenses to use the given trademark – the trademark assignment quite literally transfers the  right of ownership  in the trademark. Right – this is a very serious matter.

Trademark Assignments – Nuanced Structure, Nuanced Result

There are few different types of trademark assignments, including a complete assignment, a partial assignment, an assignment with goodwill and an assignment without goodwill. A complete assignment is when all rights are transferred. Essentially, this leaves the former owner without any rights or royalties on the trademark. A partial assignment is when a trademark transfer is performed for a specific product or service. In this trademark assignment structure, you are able to retain rights and royalties to the majority of your business. An assignment with goodwill is a trademark transfer that allows a manufacturer to produce your product. An assignment without goodwill is when a specific product or service is sold to a third party to manufacture an unrelated product.

Trademark Transfers and Trademark Assignments – Weigh Your Options Carefully

Ask yourself, what’s the end goal of the Trademark Transfer and Assignment?

When considering a trademark transfer it is important to weigh the pros and cons of licensing structures vs. permanent TM sales. Do you simply want to grow your business by working with a manufacturer who can mass produce your product? Do you want to perform a trademark transfer in which a third party has control over a specific part of your business, or do you want to permanently transfer all rights and royalties of your trademark to a new owner? Hopefully, you’ll find what trademark transfer agreement is right for you.

Choose Carefull – Your Business Depends on it

Every client is different. Every Situation is Unique.  Contact our trademark lawyers to discuss your particular trademark portfolio to learn more.

Trademark Assignment

• For a free consultation, please tell us your issue: (application, infringement, litigation, etc.) *
• Comments This field is for validation purposes and should be left unchanged.
• AS SEEN IN:

PRACTICE AREAS

• Intellectual Property Litigation
• Trademark Litigation
• Trademark Infringement
• Trademark Registration
• Copyright Litigation
• Copyright Infringement
• Copyright Registration
• Patent Litigation
• Patent Infringement
• Patent Registration

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.

Happy Clients:

We serve the following localities: Los Angeles County, Long Beach, Los Angeles, Pasadena, Santa Monica, Beverly Hills, Burbank, Glendale, Malibu, Manhattan Beach, North Hollywood, Pacific Palisades, Redondo Beach, Whittier, Orange County, Laguna Niguel, Lake Forest, Anaheim, Costa Mesa, Huntington Beach, Irvine, Mission Viejo, Newport Beach, Santa Ana, San Diego County, Carlsbad, Encinitas, La Jolla, Oceanside, and San Diego.

16870 West Bernardo Drive, Suite 400 San Diego, California 92127

Phone: (858) 487-9300 Click to Contact us

Orange County

2030 main street, suite 1300 irvine, california 92614.

Phone: (949) 474-9330 Click to Contact us

Los Angeles

12121 wilshire boulevard, suite 810 los angeles, california 90025.

Phone: (310) 656-3900 Click to Contact us

• Privacy Policy
• Terms of Use
• Scholarship

©2018 – Mandour & Associates, APC – All Rights Reserved Aggressive Intellectual Property Litigators® – Trademark Attorneys – Patent Lawyers – Copyright Attorneys

• Professionals

• Aston Building, 10th Floor, Lokhandwala Complex, Andheri West, Mumbai, Maharashtra 400053
• [email protected]

Trademark Assignment Agreement – Procedure & Documents Required

• 05 May 2023

Everything You Need to Know:

Trademarks are an essential asset for any business as they are used to distinguish a company's goods and services from those of its competitors. A trademark is a valuable intellectual property right that can be bought, sold, or transferred through a trademark assignment agreement.

In this article, we will discuss everything you need to know about trademark assignment , including why they are necessary, the procedure for assigning a trademark, the documents required, the advantages of trademark assignment, and why you need an expert for trademark assignment.

What is a Trademark Assignment Agreement?

A trademark assignment agreement is a legal document that transfers the ownership of a trademark from one party (the assignor) to another party (the assignee). The assignor gives up all rights and ownership to the trademark, and the assignee becomes the new owner of the trademark.

Why is Trademark Assignment Necessary?

Trademark assignment is necessary when a business is sold or when a trademark is being transferred from one entity to another. It is also necessary when a trademark owner wishes to license their trademark to someone else or when a trademark is being used as collateral for a loan.

Procedure for Trademark Assignment:

The procedure for trademark assignment involves the following steps:

• Drafting of Trademark Assignment Agreement: The first step in the trademark assignment process is to draft a trademark assignment agreement that clearly outlines the terms and conditions of the assignment.
• Execution of Agreement: Once the agreement has been drafted, both the assignor and the assignee must sign the agreement to indicate their acceptance of the terms and conditions.
• Filing of Trademark Assignment Application: The next step is to file a trademark assignment application with the relevant trademark office. The application must include a copy of the trademark assignment agreement and other required documents.
• Review by Trademark Office: The trademark office will review the trademark assignment application and the supporting documents to ensure that the assignment complies with the relevant laws and regulations.
• Approval and Recordal: If the trademark office approves the trademark assignment, the assignee's name will be recorded as the new owner of the trademark.

Documents Required for Trademark Assignment:

The following documents are required for trademark assignment:

• Trademark Assignment Agreement: A legally binding agreement that outlines the terms and conditions of the trademark assignment.
• Certificate of Registration: A copy of the certificate of registration for the trademark being assigned.
• Power of Attorney: A power of attorney signed by the assignee authorizing their representative to act on their behalf in connection with the trademark assignment.

Advantages of Trademark Assignment:

The advantages of trademark assignment include:

• Transfer of Ownership: Trademark assignment allows for the transfer of ownership of a trademark from one entity to another.
• License to Use: Trademark assignment allows for the licensing of a trademark to another party for use in connection with specific goods or services.
• Collateral for Loans: Trademark assignment can be used as collateral for loans.

Why Need an Expert for Trademark Assignment:

Trademark assignment is a complex legal process that requires expert knowledge and experience. An expert can help ensure that the trademark assignment agreement is drafted correctly, that all necessary documents are filed, and that the assignment complies with all relevant laws and regulations.

Conclusion:

Trademark assignment is an important legal process that allows for the transfer of ownership of a trademark from one entity to another. It is important to have a clear understanding of the procedure for trademark assignment, the documents required, the advantages of trademark assignment, and why you need an expert for trademark assignment. If you need assistance with trademark assignment, it is recommended that you consult with an expert in trademark law.

<Find All Legal Services>

Aston Building, 10th Floor, Lokhandwala Complex,

Andheri West, Mumbai, Maharashtra 400053

+919167688129

Get connected to our insights

Other Posts You May Enjoy

Joint Venture Agreement: A Comprehensive Guide

Vendor Agreement: Understanding the Essentials

Will Drafting & Registration: Ensuring Your Wishes Are Honoured

Leave a reply.

Your email address will not be published. Required fields are marked *

Your Enquiry has been received.

Soon we will get in touch with you.

Registration

Upload Licence Certificate

Upload Aadhar Card

Change password, meeting details, select a city.

Your Meeting Requested Successfully