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Master Trademark Assignment Agreement, dated May 5, 2022, by and among ICPT Inc., RXF Technologies, Inc. and Mercury Pharma

Exhibit 10.7

[Certain identified information has been excluded from the exhibit because it is both not material and is the type that the registrant treats as private or confidential.]

MASTER TRADEMARK ASSIGNMENT AGREEMENT

This Master Trademark Assignment Agreement (this “ Assignment ”) is made and entered into effective as of May 5, 2022 (the “ Execution Date ”) and effective as of the Completion (as defined below) (the “ Effective Date ”) by and among Intercept Pharmaceuticals, Inc., a company incorporated in Delaware, and RXF Technologies, Inc., a company incorporated in Delaware (collectively, the “ Sellers ”), and Mercury Pharma Group Limited, a company incorporated in England (the “ Purchaser ”).  The Sellers and the Purchaser are sometimes referred to herein individually as a “ Party ” and collectively as the “ Parties .”

WHEREAS , the Sellers are the sole and exclusive owners in the applicable jurisdiction of the Trademarks set forth on Schedule A attached hereto and made part hereof (collectively, the “ Purchased Trademarks ”); and

WHEREAS , in connection with (a) that certain Share Purchase Agreement, dated as of May 5, 2022 (the “ Share Purchase Agreement ”), by and among Intercept Pharmaceuticals, Inc., Intercept Pharmaceuticals LLC and the Purchaser, (b) that certain Sublicense Agreement, dated as of May 5, 2022 (the “ Sublicense Agreement ”), by and among Intercept Pharma Europe Ltd and the Purchaser, and (c) Intercept Pharma Europe Ltd. and Advanz Pharma Services (UK) Limited are entering into that certain Business Transfer Agreement as of the Execution Date whereby, upon the Completion Date, Licensee shall acquire the business of certain non-US subsidiaries of Intercept, the Purchaser wishes to acquire from the Sellers, and the Sellers wish to assign, transfer, convey and deliver to the Purchaser, the Purchased Trademarks.

NOW, THEREFORE , in consideration of the premises and the mutual promises and conditions hereinafter set forth and set forth in the Share Purchase Agreement and the other Ancillary Agreements, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, do hereby agree as follows:

[ Signature page follows ]

IN WITNESS WHEREOF , the undersigned have duly executed this Assignment as of the Execution Date.

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United States Patent and Trademark Office - An Agency of the Department of Commerce

Trademark assignments: Transferring ownership or changing your name

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered. Here are examples of common reasons:

  • I’ve sold my business and need to transfer ownership of the trademark.
  • I got married just after I filed my application and my last name changed. 

This transfer of ownership is called an assignment. There are fees associated with assignment changes. Locate the Trademark Services Fee Code “8521” on the current fee schedule to find the fee.

To correct minor errors, see correcting the owner name in Trademark Electronic Application System (TEAS) forms. These corrections aren’t considered assignments.

Limitations based on filing basis

For Intent-to-Use applicants, if you’re transferring ownership to a business successor for the goods or services for which your mark relates, you can file your assignment at any time. In all other cases, you must wait until after you  file an Amendment to Allege Use before you file your assignment. See TMEP section 501.01(a) . 

If you're filing through the Madrid Protocol, follow the guidance using the Madrid Protocol to change name or ownership. 

How to update ownership information

To transfer ownership or update your information to reflect a legal name change:

  • Use Electronic Trademark Assignment System (ETAS) to request the change.
  • If you're filing a TEAS form within the next week, you may need to manually update the owner information on the TEAS form. If your TEAS form doesn't reflect your requested change:

a. Check the box under the owner name to change the owner name. 

b. Explain why you are change the owner name in the Miscellaneous Statement field.

c. Enter the new name in the name field.

If you're not filing a TEAS form within the next week, check the status of your assignment change to verify that your information has been updated. 

You'll receive a confirmation receipt: In approximately seven days you'll receive the official Notice of Recordation/Non-Recordation. If you haven’t received this notice, please contact the Assignment Recordation Branch . 

How we review: Before the document is recorded, we carefully review the information you fill out on the ETAS form for accuracy with the information in the document transferring ownership. If we find an error or discrepancy, we may contact you to correct it before we record your filing. 

If you’ve made an error in the ETAS form: Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the Trademark Manual of Examining Procedure (TMEP) Section 503.06 to make any corrections to the assignment.

Making assignment changes by filing on paper

Use the Recordation Form Cover Sheet to transfer ownership or change the name using a paper submission. Mail to:

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

Generally, paper filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.

Checking the status of your assignment change

After you receive your Notice of Recordation, wait one week to check the Trademark Status and Document Retrieval (TSDR) to verify the owner information has been updated. Follow these instructions to check TSDR:

1.    Go to TSDR . 2.    Enter the serial number or registration number. 3.    Select the Status button. 4.    Scroll down to the current Owner(s) Information.  5.    Check to see that owner information is updated correctly.   If the owner information hasn’t yet updated, go to the Prosecution History to see the status. It may take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry says "Ownership records not automatically updated," notify us in writing so that the records can be manually updated. The form you use depends on the status of your application:

  • If your trademark has not published in the Trademark Official Gazette, use the TEAS Voluntary Amendment form .
  • If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
  • If your trademark has registered , use the TEAS Section 7 Request form .

Updating your correspondence information

Even if your ownership information is automatically updated in the Trademark Status and Document Retrieval (TSDR) system, you must ensure that your correspondence information including any attorney information is also updated. To update your correspondence or any necessary attorney information, please file your request through the TEAS Change of Address or Representation (CAR) form . 

TMIN News Video 15: Assignments and Ownership Changes

Watch this video to learn about the most common types of ownership changes and how to properly notify us of each type.

TMIN News 15: Assignments and ownership changes

Other viewing options:, other resources:.

More news broadcast-style videos about the federal trademark application process are available on the Trademark Information Network (TMIN) series webpage .

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

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Legal Templates

Home Business Trademark Assignment Agreement

Trademark Assignment Agreement Template

Use our Trademark Assignment Agreement to transfer a trademark to a new owner.

Updated May 26, 2023

A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”).

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

When is a Trademark Assignment Agreement Needed

Consequences of not using a trademark assignment agreement, common situations for using a trademark assignment agreement, what should be included in a trademark assignment agreement, trademark assignment agreement sample, what is a trademark assignment agreement.

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

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. Remember that  registering a trading name is different from registering a trademark.

In addition to words, phrases, or logos, a trademark can include a slogan, name, scent, shape of a product or container, and 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.

A Trademark Assignment Agreement is commonly used to document a trademark or service mark transfer of ownership. A transfer of ownership is often needed 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 mark. Trademarks are often part of a company’s valuable assets and should be treated like property.

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

If you do not want to transfer complete ownership of the mark, consider a Trademark License Agreement. A license gives you temporary permission 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: describe 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 is being paid for the mark
  • Warranties: the Assignor guarantees that they are the proper owner and have the 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

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 mark consists of, and what 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 .

The sample trademark assignment agreement below shows what a typical agreement looks like:

Trademark Assignment Agreement Sample

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  1. Master Trademark Assignment Agreement, dated May 5 ...

    This Master Trademark Assignment Agreement (this “ Assignment ”) is made and entered into effective as of May 5, 2022 (the “ Execution Date ”) and effective as of the Completion (as defined below) (the “ Effective Date ”) by and among Intercept Pharmaceuticals, Inc., a company incorporated in Delaware, and RXF Technologies, Inc., a company incor...

  2. Form of Trademark Assignment and License Agreement

    FORM OF TRADEMARK ASSIGNMENT AND LICENSE AGREEMENT THIS TRADEMARK ASSIGNMENT AND LICENSE AGREEMENT, dated as of May , 2006 (“Effective Date”), is made and entered by and among Sprint Nextel Corporation, a Kansas corporation on behalf of itself and its all of its controlled affiliates

  3. Assignment and License Back Sample Clauses

    Assignment and License Back. 2.1.1 Subject to the provisions of this clause 2, NXP, on behalf of itself and its Affiliates, hereby irrevocably assigns, sells, conveys and transfers to DSPG Switzerland, effective as of the Effective Date, all right, title and interest throughout the world in and to: Sample 1 Assignment and License Back.

  4. Trademark assignments: Transferring ownership or changing

    Trademark assignments: Transferring ownership or changing your name Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered. Here are examples of common reasons:

  5. Create a Trademark Assignment Agreement

    Updated May 26, 2023 A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”). As a reference, people call this agreement by other names: