assignment deed for trademark

Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

• Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
• Date : The date on which the deed is executed should be clearly mentioned.
• Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
• Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
• Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
• Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
• Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
• Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
• Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
• Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
• Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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Legal Templates

Home Assignment Agreement Trademark

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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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 Agreement

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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.

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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.

A twenty-five year attorney and certified mediator native to the Birmingham, Alabama area.

I absolutely love helping my clients buy their first home, sell their starters, upgrade to their next big adventure, or transition to their next phase of life. The confidence my clients have going into a transaction and through the whole process is one of the most rewarding aspects of practicing this type of law. My very first class in law school was property law, and let me tell you, this was like nothing I’d ever experienced. I remember vividly cracking open that big red book and staring at the pages not having the faintest idea what I was actually reading. Despite those initial scary moments, I grew to love property law. My obsession with real estate law was solidified when I was working in Virginia at a law firm outside DC. I ran the settlement (escrow) department and learned the ins and outs of transactions and the unique needs of the parties. My husband and I bought our first home in Virginia in 2012 and despite being an attorney, there was so much we didn’t know, especially when it came to our HOA and our mortgage. Our real estate agent was a wonderful resource for finding our home and negotiating some of the key terms, but there was something missing in the process. I’ve spent the last 10 years helping those who were in the same situation we were in better understand the process.

Attorney Gaudet has worked in the healthcare and property management business sectors for many years. As an attorney, contract drafting, review, and negotiation has always been an area of great focus and interest. Attorney Gaudet currently works in Massachusetts business, employment, corporate and bankruptcy law.

Samantha B.

Samantha has focused her career on developing and implementing customized compliance programs for SEC, CFTC, and FINRA regulated organizations. She has worked with over 100 investment advisers, alternative asset managers (private equity funds, hedge funds, real estate funds, venture capital funds, etc.), and broker-dealers, with assets under management ranging from several hundred million to several billion dollars. Samantha has held roles such as Chief Compliance Officer and Interim Chief Compliance Officer for SEC-registered investment advisory firms, “Of Counsel” for law firms, and has worked for various securities compliance consulting firms. Samantha founded Coast to Coast Compliance to make a meaningful impact on clients’ businesses overall, by enhancing or otherwise creating an exceptional and customized compliance program and cultivating a strong culture of compliance. Coast to Coast Compliance provides proactive, comprehensive, and independent compliance solutions, focusing primarily on project-based deliverables and various ongoing compliance pain points for investment advisers, broker-dealers, and other financial services firms.

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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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Free Trademark Assignment Agreement Template for Microsoft Word

Download this free Trademark Assignment Agreement template as a Word document to outline transfers and interests in a trademark from one party to another

Trademark Assignment Agreement

This Trademark Assignment (hereinafter referred to as the “Assignment”) is made and entered into on [Insert Date Here] (the “Effective Date”) by and between the following parties:

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

WHEREAS, the Assignor is the sole and rightful owner of certain trademarks and/or service marks and the corresponding registrations and/or applications for registration (collectively referred to as the Trademarks) set forth in Exhibit A attached hereto; and

WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and interest in and to the Trademarks; and

WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.

NOW, THEREFORE, for valuable consideration, the receipt of which is acknowledged, the parties hereto agree as follows:

1. ASSIGNMENT.

The Assignor does hereby sell, assign, transfer and set over to Assignee all of its right, title, and interest in and to the Trademarks in the United States and all jurisdictions outside the United States including, without limitation, the ongoing and existing portion of the Assignor’s business associated with the Trademarks, together with the goodwill of the business connected with and symbolized by the Trademarks (including, without limitation, the right to sue and recover for any past or continuing infringements or contract breaches related to the Trademarks, the right to renew any registrations included in the Trademarks, the right to apply for trademark registrations within or outside the United States based in whole or in part upon the Trademarks, and any priority right that may arise from the Trademarks), the same to be held and enjoyed by Assignee as fully and entirely as said interest could have been held and enjoyed by Assignor had this sale, assignment, transfer and conveyance not been made.

The Assignor authorizes the United States Patent and Trademark Office and any other applicable jurisdictions outside the United States to record the transfer of the registrations and/or registration applications set forth in Exhibit A to Assignee as the recipient of Assignors entire right, title, and interest therein.

Assignor further agrees to upon the request and at the expense of Assignee: (a) cooperate with Assignee in the protection of the trademark rights and prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge and deliver all such further papers, including registration applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Trademarks and any and all applications and registrations for the Trademarks.

2. WARRANTY.

Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Trademarks, that the Trademarks have not been previously pledged, assigned, or encumbered, and that this Assignment does not infringe on the rights of any person.

3. GOVERNING LAW.

This Assignment is governed by and is to be construed in accordance with the laws of the State of [Insert State]

4. ENTIRE AGREEMENT.

This Assignment constitutes the sole agreement of the parties and supersedes all oral negotiations and prior writings with respect to the subject matter hereof.

5. SEVERABILITY.

If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then (i) such provision will be excluded from this Assignment, (ii) the balance of the Assignment will be interpreted as if such provision were so excluded and (iii) the balance of the Assignment will be enforceable in accordance with its terms.

6. ADVICE OF COUNSEL.

EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HEREOF.

IN WITNESS whereof, the Assignor and Assignee have executed this Agreement as of the Effective Date.

By: ___________________________________ Date: __________________ _________________

[Notary Acknowledgement to Follow]

List of Trademark/Service Mark

Trademark/Service mark: _________________ Registration/Application number: _________________ Dated: _________________

Assignor Acknowledgement

State of _________________ ) County of _________________ )

On ____________________ before me the undersigned Notary Public, personally appeared ____________________________ ASSIGNOR, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within the instrument and acknowledged to me that he/she executed the same in his/her authorized capacity and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

I certify under PENALTY OF PERJURY under the laws of the State of _________________ that the foregoing paragraph is true and correct.

WITNESS my hand and official seal.

________________________________________ (Notary Seal) Notary Public

________________________________________ My commission expires

Assignee Acknowledgement

On ____________________ before me the undersigned Notary Public, personally appeared ____________________________ ASSIGNEE, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within the instrument and acknowledged to me that he/she executed the same in his/her authorized capacity and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

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Advertising agreement, arbitration agreement, barter agreement, business sale agreement.

Trademark Assignment Agreement

Used 4,885 times

A Trademark Assignment Agreement is a formal contract that spells out the conditions of a deal between two parties.

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Prepared for:

​ [Assignor.FirstName] ​

​ [Assignor.LastName] ​

Prepared by:

​ [Assignee.FirstName] [Assignee.LastName] ​

This trademark assignment agreement is entered into between [Assignee.FirstName] ​ [Assignee.LastName] ("Assignee") and [Assignor.FirstName] ​ [Assignor.LastName] ("Assignor") on [Document.CreatedDate] .

The terms of this agreement are as follows:

The Assignor hereby assigns, transfers, and conveys to the Assignee all right, titles, and interests in the trademark/logo (insert trademark details). This includes all rights under any applicable patents, copyright registrations, and patent applications related to the trademark.

The Assignor agrees to transfer ownership of the trademark (insert trademark details) to the Assignee in exchange for a payment of (insert amount).

This payment will be due within (insert number) days of the effective date of this agreement. In case of late or non-payment, the Assignee reserves the right to pursue legal action.

Legal Obligations

The Assignee assumes all responsibility and liability for the use and management of the trademark/logo, including any legal obligations related to the trademark. This includes compliance with all applicable laws and regulations regarding trademarks, as well as any renewal or other legal requirements associated with the continued use of the trademark.

If this agreement is terminated for any reason, both parties agree to cooperate in an orderly transition of the trademark/logo to a new owner.

Transfer Timeline

The Assignor agrees to transfer ownership and management of the trademark to the Assignee within (insert number) days of the effective date of this agreement.

Governing Law

This trademark assignment agreement is governed by the laws of [Assignee.State] . In the event of any dispute arising from this agreement, the parties agree to resolve the matter through mediation or other appropriate legal channels.

Severability

If any provision of this agreement is deemed unenforceable or invalid, the remaining provisions will remain in effect.

The Assignor hereby warrants that the trademark/logo is free from any third-party claims or legal disputes and that the Assignor has all necessary rights to transfer ownership of the trademark as outlined in this agreement.

Additional Provisions

The Assignor agrees to provide ongoing support and management of the trademark until (insert date). This may include renewing any applicable intellectual property rights and outreach and enforcement activities.

Both parties agree to keep all information related to this agreement strictly confidential. Any breach of confidentiality will be subject to legal action.

We hereby agree to the terms of this trademark assignment agreement, including all associated payments, legal obligations, transfer timeline, governing law, and any other provisions. We acknowledge that we are legally bound to its terms by signing this agreement.

​ [Assignor.FirstName] [Assignor.LastName] ​

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Assignment of Trademark

GENERAL UNDERSTANDING:

As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.

Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.

STATUTORY DEFINITION:

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;

WHO CAN ASSIGN A TRADEMARK:

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.

Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.

  TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr.  X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.

In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.

2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.

In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)  

PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

REGISTRATION OF ASSIGNMENT OF TRADEMARK:

1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)

2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)

3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)

4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )

5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)

6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)

7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-

a) the name and address of the assignee;

b) the date of assignment;

c) where the assignment is in respect of any right in the trademark, a description of the right assigned;

d) the basis under which the assignment is made; and

e) the date on which the entry is made in the register.

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.

In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:

“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.

The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.

In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:

“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”

The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;

√  Registered or unregistered both type of marks can be assigned;

√  Assignment can be with or without the goodwill of the business;

√  Event of assignment asserts the rights and title in an assignee not the registration thereof;

√  Registration of assignment is only prima facie proof of title of trademark;

√  Rights in an assignee exists even before registration of assignment of trademark.

Conclusion: –

Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.

Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.

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Assignment and Transmission of Trademark

• Intellectual Property Rights Blogs Subject-wise Law Notes
• Aishwarya Agrawal
• May 23, 2023

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment. 

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

• Restriction on assignment or transmission that would create multiple exclusive rights.
• Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

• Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
• The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
• If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
• In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties. 

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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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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Overview of Trademark Assignment

Assignment means transfer and Trademark Assignment is a method of transferring the ownership and proprietary rights of the trademark to a 3rd party with or without the goodwill of the business. It is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark.

As we all know that trademark is intellectual property belonging to the owner, as other property are often sold for price so in the similar approach a trademark can be sold for price.

Usually, Trademark Assignment is initiated when the entire business is sold off, or the company owns many trademarks for brands, and wanted to sell a few of them.

It takes about six to ten months from filing an application for trademark assignment for getting of approval from the Registrar of Trademarks.

As for selling of any property being car or house etc. , a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

Important points to be included in trademark assignment deed:

• The most important clause to be included in Trademark Assignment Deed is Selling Price or Consideration for which transfer is made and stamp duty is calculated on the same consideration.
• Geographical area in which assignee or purchaser can use the brand name
• Details for whether transfer is with Goodwill or without Goodwill

Types of Assignment

A trademark can be assigned in the following different ways: • Complete Assignment • Partial Assignment • Assignment with Goodwill • Assignment without Goodwill

• Complete Assignment – When all the rights vested in a trademark including rights to further transfer, royalties, etc., are legally granted to another entity/person is known as complete assignment of trademark.
• Partial Assignment – Under the partial assignment there are certain restrictions on the transfer of ownership to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties. o For example-A, owner of a tea and a biscuit brand, transfers proprietary rights only related to the tea brand and retains the rights to transfer over the biscuit brand. It is known as partial assignment.
• Assignment with goodwill – When the owner transfers all the rights and royalties of the trademark related to all product or service which are owns by owner, is known as assignment with goodwill.
• Assignment without goodwill – when both the parties i.e. seller and buyer can use a same trademark but for different products or services. Owner of trademark does not allow the assignee to trade in the products in which he used to.

In any of the above cases, the assignment or transfer of the trademark must be recorded with the Registrar of Trademarks.

Document Required for Trademark Assignment

In regard to the Trademark Assignment, following documents are needed:

• Assignment Deed
• Affidavit of the Assignor
• ID Proof of the Assignor & Assignee
• Assignment of registered trademark: Registered Trademark can be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.
• Assignment of a unregistered trademark: Unregistered trade mark may be assigned or transmitted with or without the goodwill & the ownership of the trademark can be transferred during the examination of the trademark application.

Advantages of Trademark Assignment

• Every assignment of trademark is entered in the records of registry and hence already is a proof of ownership to the trademark.
• Trademark assignment takes lesser time than to register a new brand name.
• During a Trademark Assignment, both the parties are in advantageous position as the assignor gets a good amount for brand name and the assignee will enjoy the already established brand which is known in the market.

Difference between Trademark Licensing & Trademark Assignment

• Licensing and Assignment of trademark are seem to be same but there is lot of difference between two.
• Trademark assignment is a selling of trademark or transfer of an owner’s rights, title, and interest in a trademark or service mark to others and it makes in change of ownership. Whereas, in trademark licensing, few restricted rights are granted to use the trademark with no change in the ownership are given to a third party and licensing of trademark is a permission given to use the brand name for limited period of time.

Limitation For Trademark Assignment

A trademark can be jointly owned by multiple or more than one applicant but there is a restriction on trademark assignment is that Trademark cannot be assigned if the exclusive rights of the trademark vests in more than one person.

Frequently Asked Questions

What is trademark assignment, what is trademark assignment deed.

As for selling of any property being car or house etc. a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

What should be included in Trademark Assignment Deed?

In how many ways a trademark can be assigned, which documents are required for assignment of trademark, how registered and unregistered trademark is assigned, what is limitation of trademark assignment, what is difference between trademark and different form of intellectual properties.

A detailed comparative chart of difference between various forms of intellectual properties can be found at the end of this page.

What are the advantages of Trademark assignment?

What is difference between trademark assignment and trademark licensing, difference in different form of intellectual property rights.

• BASIS OF DIFFERENCE
• PROVISIONAL PATENT
• The Trademark Act, 1999 deals with registration and prevention of fraudulent use of trademarks.
• The Copyright Act, 1957 provides for the registration and protection of copyright.
• Registration and protection of Industrial Design is administered by the Design Act, 2000 and rules made there under.
• Registration and protection of Patent is governed by the Patent Act, 1970 and rules made there under.
• Trade Marks Act,1999
• Copyright Act,1957
• Design Act,2000
• Patent Act,1970
• It can include name, symbol, slogans, logo, and or image which identify the business/brand and it makes different from others.
• Protection of original creative works like Music, Books, Articles, drawing, painting,maps,Photographs, Movies, Sculptures, sound recording, choreography, motion pictures,software etc.
• Feature of pattern, configuration, shape, ornaments, composition of lines, or colors applied to any article, packaging and graphic symbols.
• • Novel and original inventions such as machines, processes, manufacture, composition of chemicals and its improvement. • Encourage innovation and commercialization of technological advances.
• • Novel and original inventions such as machines, processes, manufacture, composition of matter and its improvement. • Patent secures inventions that are useful for the world or to the public at large and has some productive use.
• Creative or intellectual creations
• Appearance of products
• Inventions & Idea
• Valid for 10 years but can be made perpetual by renewing it in every 10 years.
• Copyright is valid for the lifetime of the author and 60 years after the death of author.
• Validity of Design is 10 years from the date of its registration.
• • Provisional Patent will be valid for 12 months from the date of filing application of Patent. • Documents has to file for permanent patent within 12 months otherwise it will ne abandoned.
• Patent is valid for 20 years from the day the application is first made but it can’t be renewed.
• 10 years + Renewal
• Lifetime + 60 Years
• • Use within the applied class. • Protect it from anyone using without permission and give right to sell the brand.
• • Copyright owner has authority to transfer the work by licensing, assigning, and other forms of transfers. • Right to reproduce the work, to prepare derivative works, to distribute copies, to perform the work publicly, and to display the work publicly. (depending on the type of work).
• It gives authority to Use, make, sell, import, offer for sell the registered design.
• Entitled to protect from copy of the invention or infringement of Patent.
• It gives right to Use, sell, import, make with idea patented.
• Brand w.r.t. product / services
• Distribute copies & perform work publicly
• Authority to Use, sell, import etc.
• Protect from copy idea
• Parle,Domino’s,Pizzhut,Spykar etc are the brand names.
• Music, pictures, songs, software etc
• packaging and graphic symbols, composition of lines etc.
• New invention in pharmaceutical industry.
• • New invention in pharmaceutical industry. • Certain computer programs may fall within the subject matter protected by both patents and copyrights.
• Brand' "Nike", logos-the Nike tick
• A copyrighted Book
• ™ is used when registration is under process. ® is used when Trademark is registered.
• © is the symbol of copyright.
• There is no symbol to represent Design
• • There is no symbol to represent provisional Patent. • It would be able to use 'Patent Pending' on product any time in 12 months
• No symbol is assigned to registered Patent.
• Application for Trademark registration is made by business owners or owners of product.
• Artists, Architect, Choreographers, Creative Professionals and Author.
• One who creates design can apply for its registration.
• Many inventors/businesses wish to patent their inventions even before they are finalised through a provisional patent.
• Inventors and designers who have invented any original invention or invented with improved function can apply for its registration.
• Artists, Creative Professionals
• Separate application has to file for protection in different countries and hence only effective in India
• Protection is available in most of the countries of the world.
• Design protection is obtained by filing an application in each country/region of interest
• It is a territorial right and therefore applicable within the territory of India and the separate patents required to be filed for each country where protection is required.
• Territorial right
• Most of countries
• Trademark Registration usually takes 12-18 months to complete the process.
• It takes nearly 4–8 months to get a copyright if there is no objection in application filed.Otherwise it takes nearly 1–2 years depending on the application type.
• The time taken for design registration is as per the Design Act, 2000 and rules made there under.
• Patent registration takes a 2-3 years for completion of process. But the owner can claim right over a patent from the date of applying provisional patent.
• 12-18 months
• Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
• All the things related to registration of Copyright are done by Copyright Office, Government of India.
• Intellectual Property in India is governed by the Controller General of Patents , Designs & Trade Marks (CGPDTM).
• Copyright Office

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What is the Stamp Duty For Trademark Assignment?

• Post author: D. Lalitha B.com B.L (Hons)
• Post published: June 6, 2024
• Post category: Intellectual Property / Trademark

Last Updated on June 6, 2024 by D. Lalitha B.com B.L (Hons)

Trademarks are important to businesses because they foster customer loyalty and memorability. They envelop names, logos, or particular images that separate an organization’s contributions from those of others in a particular industry.  Trademark assignment  is the most common way of moving brand name ownership starting with one entity then onto the next.

Kinds of Trademark Assignment:

There are four methods available for assigning a trademark. They’re:

• Partial Assignment:
• The new owner receives only a part of the rights, title, and interest in the trademark.
• The current owner retains some rights, like the authority to use it in particular markets or with specific goods/services.
• Complete Assignment:
• All rights, titles, and interests in the trademark are transferred from the current owner to the new one.
• The new owner becomes the sole owner, assuming all associated rights and duties of the trademark.
• The assignment with goodwill:
• Both the business associated with the trademark and its ownership rights are transferred.
• This occurs when a business is sold, and the new owner wishes to obtain the related trademark in addition to the business.
• The assignment without goodwill:
• Only the ownership rights of the trademark are transferred.
• Business or goodwill associated with the trademark is not included in the transfer.
• Employed when the trademark owner wishes to sell the trademark separately from the business.

Why is trademark Assignment Important?

• Financial gain for the assignor:
• Selling the brand name can generate revenue for the business owner.
• The funds can be applied to retirement or other companies.
• Asset acquisition for the assignee:
• Acquiring the trademark provides a valuable asset for establishing and growing the business.
• Increasing efficiency in business processes:
• Facilitates brand consolidations, strengthening identities and marketing effectiveness.
• Resolves legal issues related to trademark ownership, saving time and money.
• Safeguarding brand value:
• Ensures the trademark is used according to the original brand vision.
• Gives reassurance about the brand reputation and usage.

Requirements of the Trademark Assignment Deed:

• The assignment deed must only be submitted in writing.
• The trademark that is being issued should be identified.
• The parties must both complete the assignment deed.
• The purpose of the assignment deed should be money motive.
• Whether the assignment is with or without goodwill should be included in the assignment deed.
• In accordance with the Indian Stamp Act, the assignment deed must be stamped.

Applying Trademark Application:

Here’s the process of applying for a trademark online in India

• Create a profile with the Trademark Registrar:
• Register on the Trademark Registrar’s website.
• Provide necessary information:
• Identify goods and services.
• Provide company name and type of mark filing.
• Submit the required documents:
• Drawing of the proposed mark.
• Affidavit of use or intent to use the mark in commerce.
• Proof of ownership of the mark.
• Pay filing fee:
• Submit the required fee for trademark application processing.
• Send in an authentic, verified signature:
• Authenticate the application with an authenticated copy of the signature.
• Application review:
• The application is sent to an examiner for review.
• Examiner’s decision:
• The examiner makes a decision about, to allow the mark to be put into use.
• Approval and registration:
• If approved, receive a registration certificate with the symbol ® and identifying information.

Fees and Payments:

Here’s the breakdown of the fees necessary for applying for a registered trademark online in India:

• ₹9,000 for electronic filing.
• ₹10,000 for filing in person with the Trademark Registrar.
• ₹4,500 for e-filing.
• ₹5,000 for filing by hand.
• 5% of the application or assignment value, as per the Stamp Duty Act, is payable per trademark application or assignment submitted.

Forms of Identification:

Here are the options for submitting forms of identification when applying for a registered trademark:

• Submit a filing affidavit signed by the owner or owner’s representative.
• The affidavit must be scrutinised by a competent individual.
• Include brand logo, description, and date of first use.
• List names and addresses of all owners or rights holders.
• Submit an application containing documents establishing brand ownership.
• Include a copy of the registration of the trademark certificate or a statement from the entity claiming ownership.
• Provide a statement confirming the applicant’s consent to use the mark.
• Provide contact information for authorised delegates.
• Submit an application containing extracts from earlier submission documents.
• Include a statement confirming the copying of copyrighted material without permission.

What does the “Stamp Duty” entail?

Here’s an overview of stamp duty and its significance:

• Stamp duty is imposed by state governments.
• It applies to different sorts of business endeavours, like real estate transactions,  insurance policy  administration, and financial transactions.
• Mandated by the Indian Stamp Act of 1899 Section 3.
• Ensures legal completion and validity of documents.
• State governments collect revenue from stamp duty.
• Rates are determined based on document type and transaction amount.

What is Stamp Duty for trademark Assignment?

Here’s a summary of stamp duty for trademark assignment, including relevant rates:

• Stamp duty is payable on a deed of IP rights assignment, except for copyright assignments, which are exempt.
• Imposed by state law, governed by the Indian Stamp Act of 1899.
• For trademark transfer deeds and related paperwork to be legally enforceable in India, they must be stamped.
• The amount of stamp duty for trademark assignment is based on the assigned trademark’s market value.
• State governments determine market value, which varies from state to state.
• Utilized to initiate registration requests for an individual’s title following an assignment.
• Mumbai (Maharashtra): 3%
• Kolkata (West Bengal): 5%
• Ahmedabad (Gujarat): 5%

The Key role of Stamp Duty in the context of trademark assignment:

Here’s the key role of Stamp Duty in trademark assignment:

• Legal documents, including trademark transfer deeds, must be duly stamped in accordance with the Indian Stamp Act of 1899.
• Non-payment of stamp duty can render the deed invalid, unenforceable, and, or not valid in the court.
• Stamp duty acts as a source of revenue for the government.
• The generated revenue is contributing to funding various public benefits initiatives, like social welfare, education, and infrastructure development.

Conclusion:

All in all, consideration should be given to stamp duty while assigning a trademark. To ensure a consistent and hassle-free assignment of trademarks, it is advisable that you get the advice of a lawyer who can direct you through the stamp duty payment method and assist you with consenting to whatever legal criteria are still there. To ensure the viability of a trademark assignment in India, it is important to fathom the stamp duty guidelines and fulfil the associated requirements.

• Could you explain the concept of a trademark assignment?

A trademark assignment, otherwise called a trademark transfer, alludes to the most common way of transferring the ownership of a brand, starting with one party and then onto the next. It includes the total transfer, with all rights, title, and interest in the brand.

• Can a trademark assignment be partial?

Yes, it can be partial. It is possible to transfer only a part of the rights, title, and interest in a brand name as long as both parties agree and the terms are clearly stated in the assignment agreement.

• Why Notarising a Trademark Assignment is Important?

The assignee benefits from the assignment being notarised. In order to prove that there’s not a possibility of deliberate document fraud pertaining to the assignment, notarising is also vital. The assignment consequently, it must be notarised with the appropriate stamp duty. Moreover, the assignor needs to give a notarised affidavit verifying the way that the brand name is really theirs.

• Is trademark assignment possible before registration?

Yes, you can do it by submitting the TM – M form with the prescribed fees.

• What if the registry raises a query on an assignment?

If the registry issues a notice on your request for an assignment, you can reply to it by submitting a letter in the prescribed format.

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D. Lalitha B.com B.L (Hons)

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