Table of Contents
- The Basics: What is a Trademark Assignment Agreement?
- When a Trademark Assignment Agreement is Needed
- The Consequences of Not Using This Agreement
- The Most Common Situations
- What Should be Included in This Agreement?
1. The Basics: What is a Trademark Assignment Agreement?
A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and/or design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”).
Although intangible, a trademark is a valuable asset because customers instantly associate certain qualities with a recognized brand. This agreement allows the owner to properly transfer the goodwill of a business to another party.
A simple Trademark Assignment Agreement will identify the following basic elements:
- Effective Date: when the trademark is officially transferred to the new owner
- Trademark: describe the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the U.S. 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 is being paid for the mark
- Warranties: the Assignor guarantees that they are the true owner and have authority to transfer the mark
- Signatures: the Assignor and Assignee must both sign the agreement
- Notary Public: the agreement should be notarized if you expect to register the trademark in a foreign country
As a reference, people call this agreement by other names:
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property (IP) Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Assignment Agreement
Trademark Assignment PDF Sample
The sample trademark assignment agreement below details an agreement between the assignor, ‘Jennifer B Terry’, and the assignee, ‘Wendy J Proulx.’ Jennifer B Terry agrees to transfer ownership of the trademark to Wendy J Proulx and to give up any further use of the trademark.Trademark Assignment Agreement
2. When This Agreement is Needed
A Trademark Assignment Agreement is commonly used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often needed when a product or company is being sold or purchased by another person or organization.
Two types of trademarks can be transferred:
Common Law or Unregistered
|Uses registered trademark symbol (R) or ®||Uses the trademark symbol (TM) or ™|
|Formally registered with the USPTO||Uses the service mark symbol (SM) or ℠|
|Enhanced rights because the public is on notice||Brand names and logos are automatically protected when a company uses the mark in the normal course of commerce|
|Mark appears in the USPTO’s Trademark Electronic Search System (TESS)|
3. The Consequences of Not Using This Agreement
Without a Trademark Assignment Agreement, there is no clear record of who currently owns the mark. Trademarks are often part of a company’s valuable assets and should therefore be treated like property.
|Loss of Time||Loss of Time|
|Loss of Money||Loss of Money|
|Mental Anguish||Mental Anguish|
4. The Most Common Situations
These are some of the most common situations in which a trademark assignment agreement is important:
|Startup company||Larger business|
|Business being aquired||Acquiring company|
|Company winding down its assets||Growing company|
|Company merging with another||Company merging with another|
5. What Should be Included in This Agreement?
A simple Trademark Assignment Agreement should generally have at least the following:
- Who currently owns the trademark and who will be the new owner
- What the mark 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 the Assignee will pay to be the new owner of the mark
The term “trademark” is frequently used to refer to both a trademark and a service mark. Trademarks identify products or goods, while service marks identify services provided. For example, Outback Steakhouse is a service mark because food is being served, whereas its famous Bloomin’ Onion is a trademark because it refers to the restaurant’s specialty deep-fried appetizer.
In addition to words, phrases, or logos, a trademark can also include a slogan, name, scent, shape of a product or container, and a distinctive combination of musical notes. For example, even a color can be trademark if it acts purely as a symbol according to the 1995 U.S. Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc.
Learn more about whether you should register your trademark from the USPTO Basic Facts about Trademark. If the mark is federally registered, the USPTO allows you to track assignments on their Trademark Query site. Do your homework and double check with the USPTO and in all 50 states that the Assignor actually owns the registered or unregistered mark and has the right to sell the mark. Due diligence can save you time and money later down the road.
Create Your Free Trademark Assignment Agreement in 5 min.
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Just because a trademark cannot be physically held does not mean the mark does not have a physical value. Forbes has valued Google’s trademark at a whopping $44.3 billion, while the Microsoft trademark came in right behind at a value of $42.8 billion. Properly recording an assignment allows you to clarify who owns the valuable mark.
If you do not want to transfer complete ownership of the mark, consider a Trademark License Agreement instead. A license gives you temporary permission to use the mark in some limited way. For example, a license allows you to use the mark for a certain amount of time or for a particular use or region of the country.
There are a variety of reasons why you may want to transfer ownership of your federally registered trademark (or acquire ownership of a trademark). For example, trademarks may need to be assigned during a business acquisition or as part of a reorganization. Today’s post discusses how to transfer ownership of trademarks and why you should ensure you transfer your trademarks correctly.
Documenting the Trademark Transfer with a Transfer (Assignment) Agreement
Transferring your trademark includes two major steps: documenting the transfer between the parties and then documenting the transfer with the U.S. Patent and Trademark Office (USPTO). Before you can document your transfer with the USPTO, you’ll need to put together a trademark transfer (or assignment) agreement. This document will lay out the terms of the transfer, including payment terms, what rights are being assigned, the USPTO registration number of the trademark, and any representations and warranties from the current owner of the trademark—the current owner typically represents to the new owner that they own all rights to the trademark, have the authority to transfer the mark, and are not aware of pending claims against the trademark or its use.
In order to move forward with transferring ownership of the registered trademark with the USPTO, you are first required to have a signed trademark transfer agreement.
Filing the Assignment with the USPTO
The owner of the trademark is required to record the transaction with the USPTO anytime the owner assigns a federally registered trademark.
Luckily, the USPTO has a simple online form that you can use to record the assignment. You are required to fill out the form and submit a copy of the executed transfer agreement in order to complete the assignment process—the assignment is typically processed within one business day if filed online. There is also a $40 filing fee to record the trademark assignment.
There’s also an option to file a paper version of the online form; however, if time is of the essence, then filing online is the preferred method, because paper filed assignments typically take up to one week to be recorded (versus one day for online filings).
Why does it matter that you transfer your trademarks correctly?
If you fail to properly transfer ownership of your trademarks and the individual or company that you sell your rights to does something with the trademark that infringes on another trademark, then, because you still technically own the trademark (at least as far as the USPTO records go), you may be roped into the dispute.
On the flipside, if you purchase the rights and interest to a trademark and never properly record the transfer with the USPTO, then you may end up in a battle over ownership with the prior owner—the prior owner technically still owns the trademark until the transfer is recorded with the USPTO.
Don’t forget to transfer ownership of your state trademarks as well. In Washington, the secretary of state requires a simple form and a $10 filing fee to transfer each mark.
If you’re interested in learning more about transferring your trademarks and avoiding ownership or infringement issues associated with not properly recording the transfer, feel free to contact us.
Photo: Simon Q | Flickr
Photo: Rajiv Patel | Flickr