transfer of trademark assignment

Trademark assignment—How-to guide

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Updated on: February 15, 2024 · 10min read

1. Overview

• 2. Do's & don’ts checklist

3. Trademark assignment instructions

A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including trademarks or software) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly drafted trademark assignment can help in both circumstances. 

A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.

If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your trademarks. 

2. Do's & don’ts checklist

• A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like “Coca-Cola” and images like Nike’s famous “swoosh.” A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.
• An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). A transfer of partial rights is not a trademark assignment: do not revise the agreement to limit the reach of the rights being provided.
• A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made.
• The advantage of selling your trademark outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property: you will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a trademark, make sure that this is the best (and most lucrative) approach for you and your company.
• Do not enter into an agreement without completing your due diligence. If you are purchasing a trademark, conduct searches with the USPTO, all 50 states, DBA filings, other government agencies, and online directories to make sure the seller actually has complete and unique rights in the offered property. Although your findings will not guarantee title, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the valuation and breadth of the mark. Consider hiring a professional to help in your investigation: comparing trademarks often requires a specialized understanding of what marks will be considered confusingly similar or deceptive. 
• If you are selling a trademark, make sure you own it. Although this may seem obvious, ownership of intellectual property is rarely clear-cut. For example, you may have a name that you think of as your trademark, but unless you have used it in business, you do not have rights in that mark. Even if you have been using a mark in your business, another company may have started using it before you and have priority rights in that mark. A thorough search of the relevant marketplace and registry office should be conducted before you attempt to sell your trademark.
• Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly in the document.
• Sign two copies of the assignment, one for you and one for the other party.
• It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
• If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs. 

The following provision-by-provision instructions will help you understand the terms of your assignment. The numbers and letters below (e.g., Section 1, Section 2, etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process. 

• Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest, and the Assignee is the party receiving it.
• Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the trademark.
• Section 1: Assignment of marks. The assignment and acceptance of the assignment of the trademarks and service marks. Note that the marks being assigned are not described in the agreement itself. The assignment references “Schedule 1,” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred.  Note too the emphasis placed on the goodwill being sold with the property. Goodwill can be defined as the intangible value of a piece of property (e.g., a brand’s reputation and recognizability). Remember that this is an essential element of a trademark transfer: assignments attempted without goodwill are considered invalid.
• Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
• 3(a): it is the owner
• 3(b): it has not sold or transferred the marks to any third party.
• 3(c): it has the authority to enter the agreement.
• 3(d): it does not believe that the marks have been taken from any third party without authorization (e.g., a knowing copy of another company’s trademark).
• 3(e): it does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
• 3(f): the marks weren’t created while the creator was employed by a third party. In many cases, if an individual was employed by a company and came up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the marks being sold. If you and the other party want to include additional representations and warranties, you can do so here. 
• 4(a): has the authority to enter the agreement.
• 4(b) has enough funds to pay for the assignment. 
• If you and the other party want to include additional representations and warranties, you can do so here. 
• Section 5: No early assignment. Prevents the Assignee from re-transferring the marks, or using them as collateral for loans, until it has made complete payment of the money due under the agreement. 
• Section 6: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
• Section 7: No further use of marks. Indicates that after the effective date of the agreement, the Assignor will stop using all of the trademarks being transferred and will not challenge the Assignee’s use of those marks.
• Section 8: Indemnification. A description of each party’s future obligations if the trademark is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
• Section 9: Successors and assigns. States that the parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
• Section 10: No implied waiver. Explains that even if one party allows the other to ignore or break an obligation under the agreement, it does not mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.
• Section 11: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write a mailing address for both the Assignor and the Assignee.
• Section 12: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
• Section 13: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city—much less the same room—this provision ensures that business can be transacted efficiently without sacrificing the validity of the agreement as a whole.
• Section 14: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
• Section 15: Entire agreement. The parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
• Section 16: Headings. Notes that the headings at the beginning of each section are meant to organize the document and should not be considered operational parts of the note.
• Schedule 1: List of trademarks and/or service marks. In order for a trademark assignment to be effective, the marks being transferred must be clearly identified. Be thorough in your description and attach any registrations or samples that you may have. If you do include samples, reference the inclusion of those samples in the schedule (e.g., “See attached drawing.”).

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Trademark Assignment: How to Transfer Trademark Ownership

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

Table of Contents

What Is Trademark Assignment?

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

When Is the Assignment of Trademark Procedure Necessary?

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

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

Here’s How to Transfer Trademark Ownership

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

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

1. Due Diligence

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

2. Determine Authority to Transfer the Trademark

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

3. Execute Trademark Assignment Agreement

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

What Should Be Included in a Trademark Assignment Form?

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

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

4. Complete Ancillary Agreements

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

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

5. Notify the USPTO of Change of Ownership

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

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

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

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

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

Need Help with a Trademark Assignment Agreement?

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

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

Trademark Assignment Template Sample

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

Key Takeaways on How to Transfer a Trademark

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

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

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

How Do I Submit a Trademark Assignment to USPTO?

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

Do Patent Assignments Need to Be Recorded?

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

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Trademark Assignment

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

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

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

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

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

How to use this document

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

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

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

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

2) Have the notarization completed

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

Applicable law

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

How to modify the template:

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

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

A guide to help you: How to Register A Trademark

Other names for the document:

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

Country: United States

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USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

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

Steps in Assigning a Trademark

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

Points To Remember

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

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

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

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

Patent and Trademark Ownership

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

Assignment Fees

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

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

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Content Approved by UpCounsel

• Trademark Assignment Recordation
• Trademark Transfer: Everything You Need To Know
• How Long Does a Trademark Last
• Trademark Law
• Selling Trademarks
• Trademark Checklist
• Are All Trademarks and Names Legally Protected
• Available Trademarks
• What does Trademark Mean
• Purpose of Trademark

Morris E. Turek | (314) 749-4059 | [email protected]

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• Trademark Registration
• Trademark Office Action Responses and Appeals
• Statement of Use
• Extension of Time to File Statement of Use
• Trademark Registration Renewal and Maintenance
• Trademark Opposition
• Trademark Cancellation
• Trademark Assignment
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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 Electronic Trademark Assignment System ( ETAS ).  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

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

Need Help Preparing or Recording a Trademark Assignment?

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

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

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Transfer of Trademark: A Comprehensive Guide

• Categories: Trademark Assignment
• May 19, 2023

The Concept of Trademark Transfer

What is trademark transfer.

Trademark transfer refers to the process where the rights and ownership of a trademark are transferred from one entity to another. This can occur for various reasons, such as a business sale, merger, or licensing agreement.

Reasons for Transfer of Trademark

There are numerous reasons why a trademark transfer might occur. It could be due to a company’s strategic decision, a legal requirement, or a financial necessity.

Understanding Trademarks

What is a trademark.

A trademark is a unique symbol, logo, word, or phrase that a company uses to distinguish its products or services from those of others. It’s a significant part of a company’s brand identity, offering a way for consumers to recognise and associate with the company.

Importance of Trademarks

Trademarks play a crucial role in the business world. They protect the company’s reputation, prevent confusion in the marketplace, and help in building brand loyalty among customers.

Types of Trademark Transfer

An assignment is a complete transfer of rights, where the original owner relinquishes all rights and interests in the trademark to the new owner.

Licensing, on the other hand, is a partial transfer . The original owner, or licensor, grants permission to another party, the licensee, to use the trademark under specific conditions.

The Process of Trademark Transfer

Preparing for transfer.

Before a trademark can be transferred, it’s essential to prepare thoroughly. This includes ensuring the trademark is registered and conducting a thorough valuation.

Legal Procedures

The legal procedures for a trademark transfer can be complex. It’s crucial to draft a clear and comprehensive transfer agreement and to record the transfer with the appropriate trademark office.

Potential Issues and Solutions

Common challenges in trademark transfer.

A transfer of trademark can present several challenges, such as disagreements over valuation, potential infringement issues, and navigating the legal procedures.

How to Overcome These Challenges

To overcome these challenges, it’s advisable to seek professional advice, conduct thorough due diligence, and ensure clear communication between all parties involved.

International Trademark Transfer: A Closer Look

Transferring a trademark internationally can be a complex process, but it’s often necessary for businesses operating in the global market. Let’s delve deeper into this topic.

International Trademark Protection

According to the World Intellectual Property Organisation (WIPO), you can protect your trademark internationally in two ways. You can either file a trademark application with the trademark office of each country where you seek protection, or you can use WIPO’s Madrid System.

The Madrid System is a convenient solution for registering a trademark in multiple territories. It allows you to benefit from one application, in one language, paid in one currency. This system simplifies the process of international trademark registration, making it easier for businesses to protect their brand globally.

The Role of WIPO in Trademark Transfer

WIPO plays a significant role in the international trademark landscape. It administers several treaties that, along with national and regional laws, make up the international legal framework for trademarks. These treaties include the Paris Convention, Madrid Agreement, Madrid Protocol, and others.

WIPO also provides resources like the Global Brand Database, which allows you to search for trademarks, appellations of origin, and official emblems. This can be particularly useful when preparing for a trademark transfer, as it allows you to conduct thorough due diligence and ensure there are no existing trademarks that could conflict with yours.

The Impact of Trademark Transfer on Brand Identity

Maintaining brand consistency.

When a trademark is transferred , it’s crucial to maintain brand consistency. This means ensuring that the trademark continues to represent the same quality and values that customers associate with it. Any changes to the trademark or how it’s used can confuse customers and potentially harm the brand’s reputation.

Communicating the Transfer

It’s also important to communicate the trademark transfer to customers, suppliers, and other stakeholders. This can be done through various channels, such as press releases, social media updates, and direct communication. Transparency during this process can help maintain trust and prevent any misunderstandings.

The Future of Trademark Transfers

The role of technology.

Technology is playing an increasingly important role in trademark transfers . For example, blockchain technology could potentially be used to create a transparent and secure record of trademark transfers, making the process more efficient and reliable.

The Impact of Globalisation

As businesses continue to operate on a global scale, the need for international trademark transfers is likely to increase. This will require businesses, legal professionals, and trademark offices to adapt and find ways to streamline the process while still ensuring that trademarks are adequately protected.

Transferring a trademark is a significant process that requires careful planning and execution. Whether you’re considering assigning or licensing your trademark, understanding the process and potential challenges can help ensure a smooth transition.

• An assignment is a complete transfer of rights, while a license is a partial transfer where the original owner still retains some rights.
• Yes, but the process can be complex and may require the assistance of legal professionals familiar with international trademark laws.
• If a transfer is not recorded, it may not be legally enforceable, and the new owner may not be fully protected.
• Yes, a trademark can be licensed to multiple parties, but it’s important to ensure that this doesn’t lead to market confusion.
• The duration can vary depending on the complexity of the transfer, the jurisdictions involved, and the efficiency of the legal procedures.

Written by Ellis Sweetenham – Senior Intellectual Property Law Consultant

After achieving a First Class LLB Law degree from Southampton Solent University in 2016, Ellis went on to complete an LPC LLM in Legal Practice in 2017 at the University of Law. Following her training, Ellis was admitted to the role as a Solicitor in February 2019.

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Trademark assignment: How to Assign a Trademark and Transfer Your Rights

1. what is a trademark and why is it important, 2. what is a trademark assignment and what are the benefits of assigning a trademark, 3. what documents and information do you need, 4. what factors to consider and how to negotiate a fair deal, 5. what clauses and terms to include and how to avoid common pitfalls, 6. what forms and fees are required and how to complete the process, 7. what legal remedies and strategies are available and how to seek them, 8. how to make the most of your trademark assignment and what to do next.

Trademark assignment is a crucial aspect of protecting intellectual property rights . It involves the transfer of ownership of a trademark from one party to another. Understanding what a trademark is and why it is important is essential in comprehending the significance of trademark assignment.

From a legal perspective, a trademark is a distinctive symbol, word, phrase, design, or combination thereof that identifies and distinguishes the source of goods or services. It serves as a valuable asset for businesses, as it helps consumers recognize and associate products or services with a particular brand . Trademarks play a vital role in building brand reputation , establishing consumer trust, and preventing confusion in the marketplace.

From a business standpoint, trademarks provide a competitive advantage by creating brand recognition and loyalty . They enable companies to differentiate their offerings from competitors and build a unique identity in the market. A strong trademark can enhance the marketability of products or services and contribute to long-term business success .

1. Protection of Brand Identity: Trademarks safeguard the distinctiveness and exclusivity of a brand. By registering a trademark, businesses gain legal protection against unauthorized use or infringement by others. This ensures that consumers can easily identify and trust the origin of goods or services associated with the trademark.

2. Prevention of Confusion: Trademarks help prevent consumer confusion by distinguishing one brand from another. They enable consumers to make informed purchasing decisions based on their familiarity and positive experiences with a particular brand. This fosters trust and loyalty, benefiting both businesses and consumers.

3. brand Reputation and trust : A strong trademark builds brand reputation and instills trust in consumers. It represents the quality, reliability, and consistency of products or services offered by a brand. A positive brand image enhances customer loyalty and attracts new customers, leading to increased market share and profitability.

4. Competitive Advantage: Trademarks provide a competitive edge in the marketplace. They allow businesses to differentiate themselves from competitors and create a unique selling proposition . A strong trademark can influence consumer preferences and drive customer acquisition , helping businesses gain a larger market share.

5. Licensing and Expansion Opportunities: Trademarks can be licensed or franchised, providing additional revenue streams for businesses. Licensing allows other companies to use the trademark in exchange for royalties, expanding the brand's reach and generating income. Trademarks also facilitate geographical expansion by establishing brand recognition in new markets.

To illustrate the importance of trademarks, let's consider an example. Imagine a consumer looking for a smartphone and coming across two options: "Brand X" and "Brand Y." Brand X has a well-known trademark associated with high-quality products and excellent customer service . On the other hand, Brand Y lacks a recognizable trademark and has a reputation for poor product reliability. The consumer is more likely to choose Brand X due to the trust and positive associations built through its trademark.

Trademarks are vital assets for businesses, providing legal protection, brand recognition, and competitive advantage. They contribute to the overall success and growth of a company by establishing a strong brand identity and fostering consumer trust. Understanding the importance of trademarks is crucial when considering trademark assignment and the transfer of rights.

What is a trademark and why is it important - Trademark assignment: How to Assign a Trademark and Transfer Your Rights

A trademark assignment is a legal process of transferring the ownership and rights of a registered trademark from one party (the assignor) to another (the assignee). A trademark assignment can be partial or complete, depending on whether the assignor transfers all or some of the rights associated with the trademark. A trademark assignment can also be conditional or unconditional, depending on whether the transfer is subject to certain terms or obligations. A trademark assignment must be in writing and signed by both parties, and it must be recorded with the relevant trademark office to be effective.

There are many benefits of assigning a trademark, both for the assignor and the assignee. Some of the benefits are:

1. For the assignor: A trademark assignment can be a source of income or a way of avoiding litigation. The assignor can sell the trademark for a lump sum or a royalty payment, depending on the agreement with the assignee. The assignor can also avoid potential disputes or infringement claims by transferring the trademark to a third party who has a better claim or a stronger position in the market.

2. For the assignee: A trademark assignment can be a way of expanding or diversifying the business. The assignee can acquire a well-established trademark that has a loyal customer base , a good reputation, and a high market value. The assignee can also benefit from the goodwill and the intellectual property rights that come with the trademark, such as the right to sue for infringement or to license the trademark to others.

3. For the public: A trademark assignment can be beneficial for the public as well. A trademark assignment can ensure the continuity and quality of the goods or services associated with the trademark, as the assignee is obliged to maintain the same standards as the assignor. A trademark assignment can also prevent confusion or deception among consumers, as the trademark remains consistent and distinctive.

For example, suppose that a company called ABC Inc. Owns a trademark for a brand of coffee called "ABC Coffee". ABC Inc. Decides to assign the trademark to another company called XYZ Ltd., which also sells coffee. The trademark assignment agreement specifies that XYZ Ltd. Will pay ABC Inc. A certain amount of money for the trademark, and that XYZ Ltd. Will continue to use the trademark in the same way as ABC Inc. The trademark assignment is then recorded with the trademark office. As a result of the trademark assignment, XYZ Ltd. Becomes the new owner and user of the "ABC Coffee" trademark, and ABC Inc. Receives a financial compensation for the transfer. The consumers of "ABC Coffee" can still enjoy the same quality and taste of the coffee, and they can easily identify the source and origin of the product. This is an example of a complete and unconditional trademark assignment that benefits all the parties involved .

What is a trademark assignment and what are the benefits of assigning a trademark - Trademark assignment: How to Assign a Trademark and Transfer Your Rights

A trademark assignment is a legal process that transfers the ownership and rights of a trademark from one party to another. It can be a complex and time-consuming procedure, so it is important to prepare well in advance and gather all the necessary documents and information. In this section, we will discuss what you need to do before, during, and after a trademark assignment, and what pitfalls to avoid. We will also provide some insights from different perspectives, such as the assignor (the original owner of the trademark), the assignee (the new owner of the trademark), and the trademark office (the authority that registers and records the trademark assignment).

Before you start a trademark assignment, you need to:

1. Verify the ownership and status of the trademark. You need to make sure that the trademark is valid, registered, and not subject to any disputes, oppositions, or cancellations. You also need to check if the trademark has any co-owners, licensees, or security interests that may affect the assignment. You can use the `search_trademark` tool to find out the details of any trademark in any country.

2. Determine the scope and terms of the assignment. You need to decide what rights and obligations you want to transfer or retain in the assignment. For example, you may want to assign the trademark in its entirety, or only for certain goods or services, or only for certain territories. You may also want to include some warranties, indemnities, or limitations in the assignment agreement. You can use the `draft_assignment` tool to generate a customized and legally binding assignment agreement based on your preferences and requirements.

3. Negotiate the price and payment method of the assignment. You need to agree on how much the assignee will pay for the trademark, and how and when the payment will be made. You may also want to consider the tax implications of the assignment, and whether you need to involve any intermediaries or escrow services. You can use the `calculate_value` tool to estimate the fair market value of your trademark based on various factors and benchmarks.

4. Obtain the consent of any third parties involved in the trademark. You need to notify and obtain the approval of any co-owners, licensees, or security holders of the trademark before you proceed with the assignment. You may also need to inform and consult with any employees, customers, or suppliers who may be affected by the change of ownership. You can use the `send_notice` tool to create and send professional and courteous notices to any relevant parties.

During the trademark assignment, you need to:

5. Execute the assignment agreement and transfer the trademark. You need to sign and date the assignment agreement in the presence of a witness or a notary public, and exchange the original copies with the assignee. You also need to hand over any physical or digital assets related to the trademark, such as the certificate of registration, the logo files, the domain names, the social media accounts , etc. You can use the `verify_signature` tool to ensure the validity and authenticity of the signatures on the agreement.

6. Record the assignment with the trademark office. You need to file the appropriate forms and documents with the trademark office of each country where the trademark is registered, and pay the required fees. This will update the official records and public databases of the trademark, and prevent any confusion or conflicts in the future. You can use the `record_assignment` tool to prepare and submit the necessary paperwork to any trademark office in the world.

After the trademark assignment, you need to:

7. Announce the change of ownership to the public. You need to inform the public and the market about the trademark assignment, and the reasons and benefits behind it. This will help to maintain and enhance the goodwill and reputation of the trademark, and avoid any confusion or misunderstanding among the consumers. You can use the `create_announcement` tool to craft and publish an effective and engaging announcement on various platforms and channels.

8. Monitor and enforce the trademark rights . You need to keep an eye on the use and protection of the trademark by the assignee, and make sure that they comply with the terms and conditions of the assignment agreement. You also need to watch out for any potential infringements or dilutions of the trademark by third parties, and take appropriate actions to defend and enforce your rights. You can use the `monitor_trademark` tool to track and report any issues or violations related to your trademark.

We hope that this section has given you a comprehensive and practical guide on how to prepare for a trademark assignment. A trademark assignment can be a great way to monetize, expand, or exit your trademark, but it also involves a lot of legal and business considerations. Therefore, it is advisable to consult with a trademark attorney or a trademark expert before you start the process. You can use the `find_expert` tool to locate and contact a qualified and experienced trademark professional near you. Good luck with your trademark assignment!

When it comes to finding a suitable assignee for your trademark, there are several factors to consider. Here are some insights from different perspectives:

1. Reputation and Expertise: Look for assignees who have a good reputation in the industry and possess expertise in the relevant field. This ensures that your trademark will be in capable hands and increases the chances of a successful transfer.

2. Compatibility: Consider the assignee's compatibility with your brand values and business goals . It's important to find someone who aligns with your vision and can maintain the integrity of your trademark.

3. Financial Stability: assess the assignee's financial stability to ensure they have the resources to manage and protect your trademark effectively. This can be done by reviewing their financial statements or conducting background checks.

4. Track Record: Research the assignee's track record in handling trademark assignments. Look for success stories and testimonials from previous clients to gauge their level of competence and reliability.

1. Determine the Value: Assess the value of your trademark by considering factors such as brand recognition, market presence, and potential future growth . This will help you establish a fair starting point for negotiations.

2. Research Market Rates: Research the market rates for similar trademark assignments to get an idea of what is considered fair and reasonable. This will provide you with a benchmark to negotiate from.

3. Identify Key Terms: Clearly define the terms of the assignment, including the scope of rights being transferred, any limitations or restrictions, and the duration of the assignment. This will help avoid misunderstandings and disputes in the future.

4. Seek Legal Advice: Consult with a trademark attorney to ensure that the assignment agreement complies with relevant laws and regulations . They can also provide guidance on protecting your interests during negotiations.

5. Consider Royalties or Licensing: If you're open to alternative arrangements, consider negotiating royalties or licensing agreements instead of a complete transfer. This can provide ongoing revenue streams while still retaining some control over your trademark.

6. Negotiate in Good Faith: Approach negotiations with a collaborative mindset, aiming for a win-win outcome . Be open to compromise and consider the assignee's perspective while advocating for your own interests.

Remember, these are general guidelines, and it's always advisable to seek professional advice tailored to your specific situation. negotiating a fair deal for trademark assignment requires careful consideration and attention to detail.

What factors to consider and how to negotiate a fair deal - Trademark assignment: How to Assign a Trademark and Transfer Your Rights

A trademark assignment agreement is a legal document that transfers the ownership and rights of a trademark from one party (the assignor) to another (the assignee). It is a common way of monetizing or expanding a trademark portfolio, as well as resolving disputes or avoiding litigation. However, executing a trademark assignment agreement is not a simple task, and it requires careful attention to detail and compliance with the relevant laws and regulations . In this section, we will discuss some of the key clauses and terms that should be included in a trademark assignment agreement, and how to avoid some of the common pitfalls that could invalidate the agreement or cause legal troubles for the parties involved.

Some of the essential clauses and terms that should be included in a trademark assignment agreement are:

1. Identification of the parties and the trademark(s) : The agreement should clearly identify the names and addresses of the assignor and the assignee, as well as the trademark(s) that are being assigned, including the registration number, the class of goods or services, and the jurisdiction of registration. This will help to avoid any confusion or ambiguity about the scope and validity of the assignment.

2. Consideration and payment terms : The agreement should specify the amount and form of consideration that the assignee will pay to the assignor in exchange for the trademark(s), such as a lump sum, royalties, or shares. The agreement should also state the payment terms, such as the due date, the mode of payment, and the consequences of late or non-payment .

3. Representations and warranties : The agreement should include representations and warranties from both parties, such as the assignor's ownership and title to the trademark(s), the absence of any liens, encumbrances, or third-party claims on the trademark(s), the validity and enforceability of the trademark(s), and the compliance with all applicable laws and regulations. The assignee may also make representations and warranties, such as the intended use and maintenance of the trademark(s), and the compliance with the assignor's quality standards and goodwill. These clauses will help to protect the parties from any potential liabilities or damages arising from the assignment.

4. Indemnification and limitation of liability : The agreement should include indemnification and limitation of liability clauses, which will allocate the risk and responsibility between the parties in case of any breach of the agreement or any infringement or violation of the trademark(s) by either party or a third party. The indemnification clause will require one party to compensate the other for any losses, damages, or expenses incurred as a result of the breach or infringement. The limitation of liability clause will limit the amount or scope of liability that one party can claim from the other in case of any breach or infringement.

5. assignment and transfer of rights : The agreement should state that the assignor assigns and transfers all rights, title, and interest in and to the trademark(s) to the assignee, and that the assignee accepts and assumes all such rights, title, and interest. The agreement should also state that the assignor will execute and deliver any documents or instruments that may be necessary or desirable to effectuate the assignment and transfer of rights, such as an assignment recordal with the trademark office or a trademark license agreement with any existing licensees.

6. Governing law and dispute resolution : The agreement should specify the governing law and jurisdiction that will apply to the interpretation and enforcement of the agreement, as well as the method and venue of dispute resolution that the parties will use in case of any conflict or controversy arising from the agreement, such as arbitration, mediation, or litigation.

Some of the common pitfalls that should be avoided when executing a trademark assignment agreement are:

- Failing to conduct a due diligence : Before entering into a trademark assignment agreement, both parties should conduct a thorough due diligence on the trademark(s) and the other party, such as verifying the ownership and validity of the trademark(s), checking for any pending or potential oppositions, cancellations, or infringements, reviewing any existing licenses or coexistence agreements, and assessing the financial and legal status of the other party. This will help to avoid any surprises or problems that could affect the value or enforceability of the trademark(s) or the agreement.

- Failing to comply with the formalities and requirements : A trademark assignment agreement should comply with the formalities and requirements of the relevant trademark office and jurisdiction, such as being in writing, being signed by both parties, being notarized or legalized, and being recorded with the trademark office. Failing to do so could render the agreement invalid or unenforceable, or expose the parties to penalties or sanctions.

- Failing to consider the tax implications : A trademark assignment agreement may have tax implications for both parties, such as income tax, capital gains tax , value-added tax, or withholding tax, depending on the jurisdiction and the nature of the consideration. The parties should consult with a tax professional and plan accordingly to minimize their tax liability and comply with their tax obligations.

- Failing to protect the goodwill and reputation of the trademark(s) : A trademark assignment agreement should ensure that the goodwill and reputation of the trademark(s) are preserved and protected, as they are the most valuable assets of a trademark. The agreement should include clauses that require the assignee to use and maintain the trademark(s) in a manner that is consistent with the quality standards and goodwill of the assignor, and that prohibit the assignee from doing anything that could harm or dilute the trademark(s). The agreement should also provide for the assignor's right to monitor and inspect the assignee's use and maintenance of the trademark(s), and to terminate the agreement in case of any breach or violation.

What clauses and terms to include and how to avoid common pitfalls - Trademark assignment: How to Assign a Trademark and Transfer Your Rights

A trademark assignment is a transfer of ownership of a trademark from one party to another. The assignor is the original owner of the trademark, and the assignee is the new owner. A trademark assignment can be partial or complete, depending on whether the assignor transfers all or some of the rights associated with the trademark. A trademark assignment can also be with or without goodwill, depending on whether the assignor transfers the reputation and customer loyalty that the trademark has acquired over time.

If you want to assign your trademark to another party, you need to record the assignment with the United States patent and Trademark office (USPTO). Recording a trademark assignment is important for several reasons. First, it provides public notice of the change of ownership and prevents confusion or disputes. Second, it protects the assignee's rights and interests in the trademark and allows them to enforce them against third parties. Third, it ensures that the USPTO's records are updated and accurate, which is necessary for maintaining and renewing the trademark registration.

To record a trademark assignment with the USPTO, you need to follow these steps:

1. Prepare a trademark assignment agreement. This is a legal document that specifies the terms and conditions of the transfer of ownership, such as the names and addresses of the parties, the description and registration number of the trademark, the scope and duration of the assignment, the consideration or payment involved, and the signatures of the parties. You can use a template or a sample agreement, but make sure to customize it to suit your specific situation and needs. You can also consult a trademark attorney to help you draft or review the agreement.

2. Submit the trademark assignment agreement and the required fee to the USPTO. You can submit the agreement and the fee online through the Electronic Trademark Assignment System (ETAS) or by mail to the Assignment Recordation Branch. The fee for recording a trademark assignment is $100 per trademark per class of goods or services. You can pay the fee by credit card, electronic funds transfer , or USPTO deposit account. You need to submit the agreement and the fee within three months of the execution date of the agreement or before the next filing deadline for the trademark, whichever is earlier.

3. Receive a confirmation and a notice of recordation from the USPTO. After you submit the agreement and the fee, the USPTO will review and process your request. If everything is in order, the USPTO will record the assignment and update the trademark database. You will receive a confirmation email or letter and a notice of recordation that contains the reel and frame number of the assignment. You can also check the status of your request online through the Trademark Status and Document Retrieval (TSDR) system. You should keep a copy of the notice of recordation for your records and proof of ownership.

By following these steps, you can successfully record a trademark assignment with the USPTO and transfer your trademark rights to another party . However, you should also be aware of some potential issues and challenges that may arise during or after the process. For example, you may encounter:

- Conflicting or competing claims of ownership from other parties, such as previous assignors, licensees, or creditors.

- Invalid or unenforceable trademark assignments due to fraud, mistake, coercion, or breach of contract.

- Loss or impairment of trademark rights due to abandonment, non-use, or genericide.

- Opposition or cancellation proceedings from third parties who challenge the validity or registrability of the trademark.

To avoid or resolve these issues, you should conduct a thorough due diligence before entering into a trademark assignment agreement, such as verifying the ownership and status of the trademark, checking for any existing or pending assignments, licenses, or liens, and searching for any similar or confusing trademarks. You should also monitor and maintain your trademark rights after the assignment, such as using the trademark consistently and properly, filing the necessary declarations and renewals, and enforcing your rights against infringers. You should also consult a trademark attorney to help you with any legal questions or problems that may arise along the way.

When it comes to enforcing your trademark rights against infringers, there are several legal remedies and strategies available. Here are some insights from different perspectives:

1. cease and Desist letter : Sending a cease and desist letter to the infringing party is often the first step. This letter notifies the infringer of your trademark rights and demands that they stop using the infringing mark.

2. Negotiation and Settlement: In some cases, it may be possible to resolve the dispute through negotiation and reach a settlement agreement. This can involve discussions on licensing, coexistence agreements, or other mutually beneficial arrangements.

3. Trademark Opposition or Cancellation Proceedings: If the infringing mark has been registered, you can file an opposition or cancellation proceeding with the relevant trademark office. This allows you to challenge the registration and potentially have it invalidated or restricted.

4. Civil Litigation: If negotiations and administrative proceedings are unsuccessful, you may choose to file a lawsuit against the infringing party in civil court. This can lead to remedies such as injunctive relief, damages, and attorney's fees.

5. Online Enforcement: With the rise of e-commerce and online platforms, it's important to monitor and enforce your trademark rights in the digital space. This can involve sending takedown notices to websites hosting infringing content or utilizing online brand protection services .

Remember, each case is unique, and the appropriate strategy will depend on various factors such as the strength of your trademark, the extent of the infringement, and your desired outcome. It's crucial to consult with a qualified intellectual property attorney who can guide you through the enforcement process and provide tailored advice based on your specific situation.

What legal remedies and strategies are available and how to seek them - Trademark assignment: How to Assign a Trademark and Transfer Your Rights

In this concluding section, we will delve into the key aspects of maximizing the benefits of your trademark assignment and outline the necessary steps to take after the assignment process. We will explore different perspectives to provide a well-rounded understanding of the topic. Let's dive in:

1. Understand the Value of Your Trademark: After completing the trademark assignment, it is crucial to recognize the value that your trademark holds. Assess its market reputation, consumer recognition, and potential for future growth. This understanding will help you leverage the trademark effectively in your business strategies.

2. Maintain Proper Documentation: It is essential to maintain accurate and up-to-date documentation related to your trademark assignment. This includes the assignment agreement, proof of transfer, and any other relevant legal documents. Proper documentation ensures clarity and protects your rights as the assignor or assignee.

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

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

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

How much does a trademark assignment cost?

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

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

What should be included in the trademark assignment?

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

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

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

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

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

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

Should trademark assignments be recorded with the USPTO?

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

How to search USPTO trademark assignments

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

How to transfer a trademark with a renewal deadline approaching

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

What should the new trademark owner do?

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

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

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

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

Need to transfer a trademark application or registration?

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

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Changing Owners of a Trademark Registration (Trademark Assignments)

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

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

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

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

When you do you need a trademark assignment?

A trademark assignment is required in the case of:

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

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

The different types of trademark assignments

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

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

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

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

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

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

Do you need assistance with a trademark assignment?

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Changing application information after approval for publication

You can request to change some information in your trademark application after your examining attorney approves your trademark for publication and before your trademark is registered. However, not all changes are allowed.  

Requesting minor changes

You can request some types of minor changes at this stage. Use the Post-Approval/Publication/Post-Notice of Allowance (NOA) amendment form to request changes such as: 

• Restricting, limiting, or deleting goods and services.  You cannot add goods, add services, or expand the scope of the goods and services on your application.  
• Making immaterial changes to your trademark. Your amended trademark must give essentially the same impression as the current version. Otherwise, it's a material alteration , which isn't allowed. See TMEP section 807.14 for more on material alteration.  
• Adding a disclaimer to your trademark. A disclaimer is a statement that you aren't claiming exclusive rights to a portion of your trademark, such as a generic word.  

If your application is based on intent to use, you can request changes until we issue a Notice of Allowance . If you've received a Notice of Allowance, wait until you file your Statement of Use. You can request changes in your Statement of Use form .  

For any other filing basis, there's a limited window for requesting minor changes before publication. If your trademark has been approved but not yet published, submit your request as soon as possible to allow for processing. If it can't be processed in time, your trademark will be published as is. However, after your trademark is registered, you can request changes by filing a Section 7 Request for Amendment or Correction of Registration Certificate form . 

Requesting changes during an opposition proceeding

If someone opposes your trademark during the publication period, the Trademark Trial and Appeal Board may open an opposition proceeding. If you need to request changes during this proceeding, use the  Electronic System for Trademark Trials and Appeals (ESTTA) instead of following the instructions on this page. See  TBMP section 514.01  for more information on amending your trademark during an opposition proceeding.

Changing ownership or attorney information

If you've changed your name or transferred your trademark to a new owner, use Assignment Center to record the assignment . See our trademark assignments page for instructions and limitations. If you filed based on section 66(a) (Madrid protocol), file your ownership transfer documents through the International Bureau instead.       

If you need to update contact information for the owner or attorney, update attorney bar information, or revoke or appoint an attorney of record, you can use the  Change of Address or Representation form . See the correspondence and attorney/domestic representative forms page for detailed instructions.  

Adding, changing, or deleting a filing basis 

You may have the option to add, change, or delete a filing basis. This is common for applicants who have a foreign application or registration, and in some cases it's required to move forward in the application process.   

If you received a foreign registration for your trademark after you submitted your initial application, you can amend your filing basis to rely on your foreign registration by filing a Petition to Change the Filing Basis After Publication form .  

If your application includes an intent-to-use filing basis, you can delete it from one or more goods, services, or classes if they already have an alternate filing basis designated. You can file a Delete Section 1(b) basis form , which is the best option if you're deleting the intent-to-use basis from your entire application. Alternatively, you can include your request to delete the intent-to-use filing basis on your Statement of Use form or on your request for extension of time to file a Statement of Use form .  

Also consider whether filing a Request to Divide Application form is right for you. When you divide your application, the goods and services that are in use can move forward in a "child application" and be registered separately. The goods or services that aren't in use can remain on the current application. Dividing your application can be helpful if you have multiple filing bases. 

For more information on changing your filing basis after publication, see  TMEP section 806.03(j)-(j)(ii) . 

Other changes

In limited situations, we may approve a request for another type of change. However, in such cases, your examining attorney may need to reexamine your application. You might receive additional office actions, and your trademark may need to be republished for opposition. To submit a request, file a Petition to Director form . 

For detailed rules and procedures on amending your application after your trademark is published, see TMEP section 1505 .  

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Trademark Assignment Agreement Template

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

Updated February 5, 2024 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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How to Transfer Ownership of a Trademark: A Comprehensive Guide for Trademark Assignment

Transferring ownership of a trademark requires careful attention to legal requirements and proper documentation. Whether you are selling, assigning, or transferring a trademark due to business restructuring or other reasons, understanding the process is essential. In this comprehensive guide, we will outline the steps involved in transferring ownership of a trademark, ensuring a seamless transition and the preservation of your intellectual property rights.

Step 1: Determine the Type of Transfer

Identify the type of transfer you are undertaking. It could be an assignment, where ownership is transferred from one entity to another, or a change of name, in which the ownership remains the same, but the name of the owner is updated. The type of transfer will determine the specific requirements and documentation needed.

Step 2: Review Trademark Laws and Requirements

Familiarize yourself with the trademark laws and requirements of the relevant jurisdiction. Each country has its own regulations and procedures for transferring trademark ownership. Ensure compliance with the specific rules governing trademark transfers to avoid any potential legal issues in the future.

Step 3: Prepare a Trademark Assignment Agreement

Create a legally binding agreement that clearly outlines the terms and conditions of the trademark transfer. The agreement should include details such as the names and addresses of the parties involved, a description of the trademark being transferred, the effective date of the transfer, and any financial considerations, if applicable. It is advisable to seek the guidance of a trademark attorney to draft a comprehensive and enforceable assignment agreement.

Step 4: Execute the Trademark Assignment Agreement

Ensure that both parties involved in the transfer sign the trademark assignment agreement. Signatures should be witnessed and notarized, where required. Retain copies of the executed agreement for your records, as they may be needed for future reference or enforcement.

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Assignment of Trademark

Updated on : Feb 22nd, 2022

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

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

Who can Assign a Trademark?

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

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment  

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

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

Partial Assignment

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

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

Assignment with Goodwill of Business  

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

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

Assignment without the Goodwill of Business  

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

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

Pre-Requisites for Assignment of Trademark

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

Trademark Assignment Agreement

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

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

Process of Assignment of Trademark

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

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

Documents Required for Assignment of Trademark

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

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

Restrictions on Assignment of Trademark

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

Parallel Use Restriction  

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

Multiple Territorial Use Restriction  

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

Benefits of Trademark Assignment

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

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.

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Assignment and Transmission of Trademark

• Intellectual Property Rights 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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• Jun 9, 2021

Can I Transfer My Trademark? How?

This is one of the commonly asked questions by trademark owners about trademark. The answer is yes, a trademark is an intangible asset which can be transferred from one to another. The process is generally known as, assignment of trademark.

Section 64(1) of the Malaysian Trademarks Act 2019 ("Trademarks Act") provides that, a registered trademark shall be transmissible by assignment or assignment in the same way as other personal or movable property, and shall be so transmissible either in connection with the goodwill of a business or independently"

"Wait, does it mean only registered trademark can be assigned? What happened to unregistered trademark?"

Fret not, unregistered trademark can be assigned too! Section 64(6) of the Trademarks Act provides that, nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business. (Phew!)

How to assign a trademark ownership?

To kickstart the process, the original owner of the trademark ("Assignor") and the new owner of the trademark ("Assignee") should sign a deed of assignment, a legal instrument that transfer the trademark from the Assignor to the Assignee. One deed of assignment may include multiple trademarks. The deed of assignment contains the terms and condition to transfer the trademark. Generally, it should include the identity of parties, the details of trademark to be transferred, effective date of transfer, and the consideration, ie. the transfer price. The consideration may be a nominal sum.

Once the parties have signed the Deed of Assignment, the document should be filed with the Government Trademark Office, with the prescribed official form (Form TMH-1) and fees.

Upon filing the documents, the Malaysian Trademark Office will usually take a few months to record the assignment into the database of the registry.

Although it seems like may take some time, but the effective date of transfer of ownership is based on the date of deed of assignment, not the date of recordal by the Trademark Office. So the rights of the parties are not affected, despite the heavy workload in the Trademark Office.

Who should be responsible to file the assignment?

There are no hard and fast rules as to whether the deed of assignment and/or application for recordal of assignment should be done by the assignor or assignee. The parties may decide on a case-to-case basis.

International Assignment of Trademarks

Since registration and protection of trademark is territorial based, the recordal of trademark assignment will also be done country by country.

In some countries, a universal deed of assignment is acceptable. Hence the same document may be used to apply for recordal of trademark assignment in a few countries and save some legal fees in drafting a separate deed of assignment in each country.

However, in some countries, there are specific requirements on format or languages of the Deed of Assignment.

So, it is always safe not to assume and you should seek consultation from your trademark agent .

When is the best timing to assign trademark ownership?

There are many reasons that prompt the need of assignment of trademark. For example, sale of trademark, corporate restructure, moving a business from sole proprietorship to private limited company (Sdn. Bhd.) or vice versa & etc.

Once you have decided any of the above moves, the assignment of trademark should be done immediately without any delay.

There are many instances that the assignment of trademark has been delayed due to procrastination or overlook. This may lead to serious and unwanted consequences.

For instance, after a few years, upon realizing the need of doing the deed of assignment, if the assignor has ceased to operate or passed away (for individual assignor), this may complicate the process of recordal of assignment due to the difficulty in locating the assignor to sign the documents.

Another example is, there may be a problem when the assignee needs to take legal action against trademark infringer, as the legal ownership of the assignee on the trademark is questionable.

Looking for assigning the ownership of your trademark? Don't wait! Contact us today!

Written by,

Li Yen Seow

IP Legal Executive

Bachelor of Laws

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.

Copyright reserved 2021 © IP Gennesis Sdn Bhd

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What is the Process of Transfer of Trademark in India?

In the modern world, the economic worth of a trademark is immense. The owner of the trademark can transfer the rights over their trademark through the process of Trademark Allocation. 

A trademark is an owner’s right to exclusively use a mark. Trademarking confers a bundle of rights which includes the right to transfer of   trademark.  Trademark  assignment refers to the task of legally transferring the title of a trademark from the primary owner (called the assignor) to the assignee, the person receiving such a right. 

Table of Contents

Forms of Assignment or Transfer of Trademark

Every registered trademark is assignable and transferable. It can take one of the following forms – 

• The transfer of a trademark can be done with or without transferring the goodwill of the business. For example, when Tata Motors took over the trademark of Jaguar’s business in India, Tata Motors also took over the goodwill of Jaguar entirely in the automobile business. 
• Trademark allocation can also be done for some or all of the goods or services for which the trademark has been assigned. For example, a cement company having multiple other businesses like construction, quarrying, and interior designing, may assign the trademark of its constructio n business only. 

Significance and Formulation of Assignment Agreement

According to the Trademarks Act, 1999 a trademark allocation can only be done by an agreement in writing between the parties concerned. Therefore, both the assignor and the assignee of the trademark must execute a legal document for the transfer of the trademark. To help you navigate the process of drafting an assignment agreement, here are some essentials – 

Details of the Mark

Since the legal title over the trademark is sought to be transferred, d etails about the trademark should be specified in the assignment agreement. Aspects of a trademark such as the brand name, application number, class number, and current status (active or not) should be mentioned in the assignment agreement without fail.

Delineation of Legal Titles

The assignor of a trademark must have all the rights, titles, and interests in the trademark. The operative part of the assignment agreement must explicitly mention that the person transferring the trademark is its lawful owner. It must also establish that the assignor (either themselves or through their successor, power of attorney holder) has the complete right, absolute power, and lawful authority to sell or assign the mark. 

Consideration

The assignment agreement should mention the amount paid by the assignee to the assignor in exchange for the trademark allocation. The receipt of consideration establishes that all rights, titles and interests in the trademark together have been assigned . 

You may also specify whether the transfer of trademark includes the transfer of the goodwill of the business, product permission and other intellectual property rights. 

Dispute Resolution and Governing Law 

Parties may mutually decide to include appropriate jurisdiction for dispute resolution. They may also include a clause preferring arbitration specifying the seat of such arbitration and the choice of law governing the dispute. 

Details About Ancillary Intellectual Property Rights

By way of the trademark assignment agreement, an assignee must specify that a trademark’s trade name,  internet domain names, and applications for the registration thereof together with all of the goodwill associated therewith are transferred. 

It is also in the assignee’s interest to ensure all other intellectual and industrial property rights of every kind which are transferred are mentioned in full detail .

The assignor and assignee may mutually decide on the formalities relating to assignment registration, renewals, extensions, continuations, divisions, reissues, etc.

Other Relevant Details the Assignment Deed Must Mention:

• The assignee’s right to sue against any other party for trademark infringement. The assignor’s delineation from any right or interest in the said trademark after the agreement is concluded. 
• A statement that proclaims that the assignee would be entitled to use and enjoy the trademark for their business without any objection or interruption by either the title owner or any person laying claim under them. 

Procedure of Assignment or Transfer of Trademark

Step 1: application for trademark assignment.

Application for assignment can be made by the assignor or by the assignee or by both.

Step 2: Filing Form TM-P

To submit your application to the Registrar of trademark assignment , you will have to complete the formalities associated with form TM-P and pay the requisite fee. 

Step 3: Documents submission

You must then submit all the required documents within 6 months from the date of acquisition. To know more about the documentation process, get in touch with our experts.

Step 4: Application processing and advertisement of assignment

Once the application is processed, the applicant must advertise the assignment in such a manner as directed by the registrar. A copy of the advertisement should also be submitted to the Registrar’s office.

Step 5: Approval

Once the application is verified, the registrar will register the assignee as the proprietor of the trademark. 

How to do a Transfer of Trademark in India?

The process of trademark assignment is time-consuming and requires extensive documentation. However, it can be highly lucrative and extremely profitable. Therefore, we recommend that you lean on Vakilsearch, India’s most trusted trademark expert to execute t r ademark assignments . 

Our team of experts is well-versed in the formalities and nuances associated with the trademark registry. Moreover, our experts will ensure that the trademark assignment agreement is drafted and executed to perfection. They will leave no stone unturned to ensure that your upside is maximized.

Feel free to reach out to our representatives for expert guidance and assistance with all trademark-related queries.

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