assignment of trademark application

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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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.

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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Trademark Assignment Agreement Template

Use our trademark assignment agreement to transfer a trademark to a new owner.

Updated February 5, 2024 Written by Josh Sainsbury | Reviewed by Brooke Davis

A trademark assignment agreement is a written document that transfers a legally recognized word, phrase, symbol, and design (the “trademark”) from the current owner (the “assignor”) to the future owner (the “assignee”).

What Is a Trademark Assignment Agreement?

When is a trademark assignment agreement necessary, consequences of not using a trademark assignment agreement, common situations for using a trademark assignment agreement, what to include in a trademark assignment agreement, changing ownership of federally registered trademarks, trademark assignment agreement sample.

A trademark assignment agreement allows the owner to properly transfer a business’s trademark to another party. Although intangible, a trademark is valuable because customers instantly associate certain qualities with a recognized brand.

The term trademark usually refers to both a trademark and a service mark [1] . Trademarks identify products or goods, while service marks identify services a company provides.

Remember that a  trading name is different from a trademark. A trading name is the actual name under which you conduct your company, while a trademark is some kind of symbol that represents your business.

In addition to words, phrases, or logos, a trademark can include a slogan, scent, logo shape, or a distinctive combination of musical notes. For example, even color can be a trademark if it acts purely as a symbol, according to the 1995 US Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc. [2]

A trademark assignment agreement is commonly used to document a trademark or service mark transfer of ownership. A transfer of ownership is often necessary when another person or organization sells or purchases a product or company.

Two types of trademarks can be transferred:

Without a trademark assignment agreement, there is no clear record of who owns the symbol. Trademarks are often part of a company’s valuable assets and should be treated like property.

Some of the consequences of not using this agreement for both assignors and assignees include the following:

These are some common situations in which a trademark assignment agreement is important:

If you don’t want to transfer complete ownership of the mark, consider a trademark license agreement. A license grants the licensee temporary permission to use the trademark in a limited way. For example, a license allows you to use the trademark for a certain amount of time or a particular use or region of the country.

A simple trademark assignment agreement will identify the following essential elements:

• Effective Date: when the trademark is officially transferred to the new owner
• Trademark: a description of the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the US Patent and Trademark Office (“USPTO”)
• Assignor: the current owner giving up ownership of the mark
• Assignee: the future owner giving money to obtain the mark
• Consideration: how much money the assignee is paying for the mark
• Warranties: a guarantee from the assignor that they’re the proper owner and have the authority to transfer the mark
• Signatures: the signatures of the assignor and the assignee
• Notary Public: the agreement should be notarized to maintain its validity

Ask yourself the following questions when creating a trademark assignment agreement:

• Who currently owns the trademark, and who will be the new owner
• What the trademark consists of and any associated registration numbers
• Where any future disputes will be handled (“Governing Law”)
• When the trademark is officially transferred to the new owner
• Why the assignor has the right to transfer the mark and associated goodwill
• How much will the assignee pay to be the new owner of the mark

If the trademark is federally registered, be sure to record the change of ownership with the USPTO Assignment Recordation Branch . A fee of $40 is required to record an assignment based on the USPTO Fee Schedule .

The USPTO Recordation Form Cover Sheet for Trademarks is strongly recommended when submitting your trademark. Additional questions about registering a trademark assignment with the USPTO may be answered by their  Transferring Ownership/Assignments FAQs .

View our sample trademark assignment agreement below so you can get an idea of what it looks like. When you’re ready to create your own, download it in PDF or Word format.

Legal Templates uses only high-quality sources, including peer-reviewed studies, to support the facts within our articles. Read our editorial guidelines to learn more about how we keep our content accurate, reliable and trustworthy.

• United States Patent and Trademark Office. Trademark, patent, or copyright. https://www.uspto.gov/trademarks/basics/trademark-patent-copyright
• United States Supreme Court. Qualitex Co. v. Jacobson Products Co., INC. https://scholar.google.com.tw/scholar_case?case=17905304466595211702&hl=en&as_sdt=6&as_vis=1&oi=scholarr&sa=X&ved=0ahUKEwjo5eKYnKbJAhXIoJQKHZvIDAsQgAMIGygAMAA
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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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A guide to help you: How to Register A Trademark

Trademark Assignment - FREE - Template - Word & PDF

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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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Trademark Assignment: What You Need to Know Before Transferring Ownership

Trademark assignment is the process of transferring ownership of a trademark. It is a significant legal process that requires careful consideration and adherence to relevant laws and regulations. Failing to understand the intricacies of trademark assignment can lead to legal disputes, loss of rights, and financial implications for both parties involved. Therefore, it is essential for individuals and businesses involved in trademark transactions to have a clear understanding of the process and its implications.

Understanding Trademark Assignment

Trademark assignment refers to the formal transfer of ownership rights of a trademark (Registered or Pending)from one individual or entity to another. It involves the conveyance of all associated rights, including the right to use, licence, or sell the trademark, to the assignee.

Importance of Proper Documentation

Proper documentation is essential in the process of trademark assignment to ensure clarity, legality, and enforceability of the transfer. Documentation typically includes a written agreement outlining the terms and conditions of the assignment, as well as any associated considerations or payments. Without proper documentation, the assignment may be deemed invalid or unenforceable, leading to potential disputes or challenges in the future.

Types of Trademark Assignment

Trademark assignment can take several forms, depending on the nature and extent of the transfer:

• Complete Assignment : In a complete assignment, the assignor transfers all rights and interests in the trademark (Registered or Pending) to the assignee. This includes the right to use the trademark for any purpose, as well as the right to sublicense or transfer the trademark to third parties.
• Partial Assignment : A partial assignment involves the transfer of only specific rights or interests in the trademark (Registered or Pending). This may include limiting the assignment to certain products, services, or geographical regions, while retaining ownership rights over other rights or interests of the trademark.
• Assignment with Goodwill : When a trademark is assigned with goodwill of the business, the assignor transfers not only the rights to the trademark but also the associated value and reputation of the trademark. This allows the assignee to benefit from the established goodwill and reputation of the trademark.
• Assignment without Goodwill : In contrast, an assignment without goodwill involves the transfer of only the rights to the trademark, without any associated value or reputation. .

Prerequisites for Trademark Assignment

Before proceeding with a trademark assignment, certain prerequisites must be met to ensure the validity and enforceability of the transfer.

Requirement of a Written Agreement

A trademark assignment must be documented in writing to provide clarity and evidence of the transfer. This written agreement, often referred to as a trademark assignment agreement, outlines the terms and conditions of the transfer, including the rights and obligations of both the assignor and the assignee. Without a written agreement, the assignment may be subject to disputes or challenges regarding the terms of the transfer.

Identification of Parties Involved

The parties involved in the trademark assignment must be clearly identified in the agreement. The assignor, who is the current owner of the trademark, and the assignee, who is the intended recipient of the trademark rights, must be accurately identified to establish their respective roles and responsibilities in the transfer process.

Consent from the Assignor

Consent from the assignor is essential for a valid trademark assignment. The assignor must willingly agree to transfer the ownership rights of the trademark to the assignee. Without the assignor’s consent, the assignment would be considered invalid and unenforceable. Therefore, obtaining explicit consent from the assignor is a fundamental requirement in the trademark assignment process.

Consideration

Consideration refers to the value exchanged between the parties as part of the trademark assignment in the form monetary consideration.

Trademark Assignment Agreement

A well-drafted trademark assignment agreement is essential to ensure clarity, enforceability, and protection of rights for both the assignor and the assignee. It helps to avoid misunderstandings or disputes between the parties involved and provides a legal framework for the transfer of trademark rights.

The trademark assignment agreement must be executed by both parties in accordance with legal formalities. It should be signed by the assignor and the assignee, with their signatures witnessed by independent witnesses. The agreement will be stamped based on the consideration amount of the assignment. Notary may also be required.

Process of Trademark Assignment

The process of trademark assignment involves several steps that must be followed meticulously to ensure the legal transfer of ownership.

Filing of Trademark Assignment Application (Form TM-P)

The first step in the process is to file a trademark assignment application with the appropriate authority, usually the Registrar of trademarks. This application is typically submitted on Form TM-P, formally notifies the registrar of the intention to transfer ownership of the trademark. The application must contain all necessary details, including information about the assignor, assignee, and the trademarks being transferred along with a copy of the assignment deed..

Advertisement of the Assignment as Directed by the Registrar

Upon receipt of the trademark assignment application, the registrar may direct the parties to advertise the assignment in a specified manner and within a specified period.This is only in case of partial assignment or in the case of assignment without goodwill This advertisement serves to notify the public of the impending transfer of ownership and provides an opportunity for any interested parties to raise objections or concerns regarding the assignment.

Registrar’s Registration of the Assignee as the New Proprietor

Once the advertisement requirements have been met and any objections addressed, the Rregistrar will proceed to register the assignee as the new proprietor of the trademark/s. This registration formally recognises the transfer of ownership and updates the official records accordingly. The assignee will now have full legal rights and responsibilities associated with the ownership of the trademark/s.

Documents Required for Trademark Assignment

Several essential documents must be prepared and submitted during the process of trademark assignment to ensure the legality and validity of the transfer.

Restrictions on Trademark Assignment

Certain restrictions are in place to ensure fair use and prevent confusion or deception among consumers.

• Parallel use restriction: This restriction prohibits the assignor from assigning a trademark in a manner that creates exclusive rights in different individuals or entities for the same or similar products or services. Essentially, it aims to prevent multiple parties from using the same trademark in a way that could lead to consumer confusion. This is applicable in the case of partial assignment.
• Multiple territorial use restriction: This restriction prevents the assignor from assigning a trademark in a manner that creates exclusive rights in different regions or territories for the same or similar products or services. It aims to maintain consistency and clarity in the use of trademarks within specific geographical areas.This is applicable in the case of partial assignment.

Benefits of Trademark Assignment

Trademark assignment offers several advantages for both the assignor and the assignee, making it a valuable tool for transferring ownership of intellectual property rights.

Monetisation of Brand Value for the Assignor

By transferring ownership rights to another party, the assignor can receive financial compensation in exchange for granting the assignee the exclusive rights to use the trademark. This can be particularly beneficial for businesses looking to capitalise on the value they have built through branding efforts over time.

Acquisition of Established Brand Rights for the Assignee

For the assignee, trademark assignment provides the opportunity to acquire the established rights and recognition associated with a well-known brand. Instead of building a brand from scratch, the assignee gains immediate access to the market presence, reputation, and consumer trust that the trademark represents. This can expedite market entry and enhance the assignee’s competitive position in their industry.

Support for Business Expansion

For the assignor, transferring ownership of underutilised trademarks or brands can free up resources and focus on core business activities. Meanwhile, the assignee can leverage the acquired trademarks to diversify their product offerings, enter new markets, or strengthen their existing market position, driving growth and revenue opportunities.

Establishment of Legal Rights in Case of Disputes

By formalising the transfer of trademark ownership through a legally binding agreement, both the assignor and the assignee establish clear legal rights and obligations. In the event of disputes or challenges to the ownership of the trademark, the assignment agreement serves as evidence of the parties’ intentions and commitments. This can streamline dispute resolution processes and provide legal recourse to protect the interests of both parties.

Frequently Asked Questions

1. What is the full assignment of a trademark?

The full assignment of a trademark refers to the transfer of all rights, interests, and ownership of the trademark from one party (the assignor) to another party (the assignee). In a full assignment, the assignor relinquishes all control and benefits associated with the trademark, including the right to use, licence, or sell the mark. This comprehensive transfer ensures that the assignee gains exclusive ownership and control over the trademark for all relevant goods or services.

2. What is licence and assignment of trademark?

A licence and assignment of a trademark involve two distinct legal arrangements. A licence grants permission to a third party (the licensee) to use the trademark under specified terms and conditions, while the ownership and control of the trademark remain with the licensor. In contrast, an assignment transfers the entire ownership rights of the trademark from one party to another. While a licence allows for the authorised use of the trademark, an assignment results in the complete transfer of ownership, including all associated rights and benefits.

3. What is the difference between transmission and assignment?

Transmission and assignment are both methods of transferring ownership of a trademark, but they differ in scope and application. Transmission refers to the automatic transfer of trademark rights due to changes in legal status, such as inheritance, bankruptcy, or corporate restructuring. In contrast, assignment is a deliberate and voluntary act where the current owner (assignor) transfers ownership rights to another party (assignee) through a written agreement. While transmission occurs by operation of law, assignment requires the explicit consent and agreement of the parties involved.

4. What is consideration for trademark assignment?

Consideration for trademark assignment refers to the value exchanged between the assignor and the assignee as part of the transfer agreement which is in monetary form. It serves as the legal basis for the contract and ensures that both parties receive something of value in exchange for the transfer of trademark rights..

In conclusion, understanding trademark assignment is crucial before transferring ownership. It’s essential to ensure proper documentation, consent, and consideration to facilitate a smooth transfer. Seeking professional assistance from legal experts can help navigate the complexities of trademark assignment and ensure compliance with legal requirements.

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Trademark Assignment: All You Need to Know

This article on ‘Assignment of Trademarks: All you need to know’ was written by Shashanki Kaushik , an intern at Legal Upanishad.

Introduction

This article provides a comprehensive overview of the assignment of trademarks in India, focusing on the legal framework, relevant legislation, landmark judgements, and practical considerations. Understanding the nuances of trademark assignment is vital for businesses seeking to protect their intellectual property rights. In India, this process is governed by various laws, including the Trade Marks Act of 1999 and the Trade Marks Rules of 2017. This article explores the intricacies of trademark assignment, touching upon key aspects, legal provisions, and notable case law.

Assignment of Trademarks : Concept and Laws

Trade Marks Act, 1999, Section 2(1)(b): Definition of Assignment: The Act defines ‘assignment’ as the transfer of ownership, either with or without the goodwill of the business.

Section 37: Requirements for Assignment: This section outlines the essential requirements for a valid trademark assignment, including the need for the assignment to be in writing and signed by both parties.

Trade Marks Rules, 2017, Rule 68: Application for Assignment: Rule 68 specifies the procedure for filing an application for the assignment of trademarks, along with the prescribed form and fees.

Types of Trademark Assignment

• Complete Assignment- A complete assignment involves the transfer of both the trademark and the associated goodwill.
• Partial Assignment- Partial assignment entails the transfer of the trademark without the goodwill of the business.
• Assignment with Goodwill- Assignments that include goodwill are more common and ensure the new owner can benefit from the established reputation and customer base.
• Assignment without Goodwill- Assigning a trademark without goodwill is less common and may occur when the assignor intends to retain the business’s reputation.

Legal Procedures for Trademark Assignment

• Application to Registrar: The assignor and assignee must file a joint application with the Registrar of Trademarks for the assignment’s approval.
• Advertisement and Opposition: After acceptance, the Registrar will advertise the assignment application. Interested parties have the opportunity to oppose the assignment within the stipulated period.
• Issuance of Certificate: Upon successful completion of the assignment process, the Registrar issues a certificate, signifying the new owner’s rights over the trademark.

Landmark Judgments

• Ravi Kamal Bali v. Kala Tech and Entertainment (P) Ltd.

This case reaffirmed that an assignment without goodwill does not affect the validity of the assignment.

• Indian Performing Right Society Ltd. v. Dalia

In this judgement, it was held that the assignee could enforce trademark rights against third parties, even without registering the assignment.

Practical Considerations

• Due Diligence : Both parties should conduct thorough due diligence before entering into an assignment agreement, ensuring the trademark’s validity and reputation.
• Clear Agreement : The assignment agreement must be clear and comprehensive, specifying the terms, conditions, and considerations involved.
• Record Keeping : Maintaining accurate records of the assignment is crucial for future reference and potential disputes.
• Post-Assignment Compliance : The assignee must ensure compliance with ongoing trademark maintenance , including renewals and protection against infringement.

Tax Implications of Trademark Assignment

Trademark assignment can have significant tax implications for both parties involved. The consideration received or paid for the assignment may be subject to capital gains tax or other taxes, depending on the specific circumstances and applicable tax laws. It is crucial for both parties to seek professional tax advice to ensure compliance with tax regulations.

Licensing vs. Assignment

While trademark assignment involves the complete transfer of ownership, licensing allows the owner (licensor) to grant permission to another party (licensee) to use the trademark under specific terms and conditions. Licensing gives more control to the trademark owner and allows for greater flexibility in terms of use, territory, and duration. Assignment, on the other hand, transfers all rights and responsibilities to the assignee, including the duty to protect and enforce the trademark.

Franchising and Trademark Assignment

Franchising often involves the assignment of trademarks to franchisees. This allows franchisees to operate under a recognized brand, benefiting from the established reputation and marketing efforts of the franchisor. Franchise agreements typically include detailed provisions regarding trademark usage, quality control, and territorial rights. Careful consideration of trademark assignment is essential in the franchising context to maintain brand consistency and protect the trademark’s value.

International Enforcement of Trademark Assignment

Enforcing trademark assignments across international borders can be challenging due to varying legal systems and regulations. Businesses engaging in cross-border trademark assignments should consider international treaties such as the Madrid Protocol and the Paris Convention, which provide mechanisms for protecting trademarks in multiple countries. Additionally, legal counsel with expertise in international trademark law is essential to navigate the complexities of enforcing trademark assignments globally.

International Perspective

Paris Convention for the Protection of Industrial Property (1883): India, as a signatory to the Paris Convention, recognizes the principle of national treatment for foreign trademark owners, providing a basis for international trademark assignment.

TRIPS Agreement (1994): The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, part of the World Trade Organization (WTO), sets minimum standards for the protection of trademarks and includes provisions related to trademark assignment.

International Trademark Assignment

Madrid Protocol : Under the Madrid Protocol, businesses can efficiently protect their trademarks in multiple countries by filing a single international application. India became a member of the Madrid Protocol in 2013, facilitating international trademark assignments for Indian businesses.

International Trademark Assignment Case Study: Coca-Cola : Coca-Cola’s global presence is a prime example of an effective international trademark assignment. Through careful planning and legal strategies, the company has maintained consistent branding worldwide.

Trademark assignment is a vital aspect of intellectual property management in India. It provides opportunities for businesses to monetize their assets or expand their market presence. However, navigating the legal framework, complying with procedures, and safeguarding interests require careful consideration. As demonstrated through relevant legislation and case law, understanding the intricacies of trademark assignment is indispensable for both assignors and assignees in India.

List of References

• Mayashree Acharaya, ‘Assignment of Trademark’, CLear Tax, 22 February 2022, available at: https://cleartax.in/s/ass i gnment-of-trademark
• ‘Assignment and Transmission of Rights’, Selvam & Selvam, available at: https://selvams.com/kb/in/trademarks/assignment/
• ‘Trademark Assignment’, Corpbiz, available at: https://corpbiz.io/trademark-assignment

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USPTO modernizes patent, trademark assignment request process

Beginning August 1, the U.S. Patent and Trademark Office (USPTO) is streamlining the process for following new assignments, obtaining information on pending assignments, questions on assignments, liens on patents, filing assignments, recordation forms, and trademark assignments.

Going forward, users will submit requests virtually using the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) storefronts. Paper and fax assignment requests will be directed to the EPAS and ETAS storefronts for digital submissions.

The collection of assignment information is required by 15 U.S.C. § 1057 and 1060 and is used by the public to submit (and by the USPTO to process) patent and trademark assignment recordation requests using the EPAS and ETAS.

For more information, contact the Assignments Recordation Branch customer service personnel at [email protected] or (571) 272-3350, or visit the Assignments Recordation Branch webpage on the USPTO website.

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