trademark assignment word document

Free Trademark Assignment Agreement Template for Microsoft Word

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

Trademark Assignment Agreement

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

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

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

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

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

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

1. ASSIGNMENT.

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

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

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

2. WARRANTY.

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

3. GOVERNING LAW.

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

4. ENTIRE AGREEMENT.

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

5. SEVERABILITY.

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

6. ADVICE OF COUNSEL.

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

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

By: ___________________________________ Date: __________________ _________________

[Notary Acknowledgement to Follow]

List of Trademark/Service Mark

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

Assignor Acknowledgement

State of _________________ ) County of _________________ )

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

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

WITNESS my hand and official seal.

________________________________________ (Notary Seal) Notary Public

________________________________________ My commission expires

Assignee Acknowledgement

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

Related Documents

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

Trademark Assignment Free

This document can be used to transfer the ownership of an existing trademark. The paper contains all the information needed to record the assignment with the United States Patent Office.

Template Overview

When one person owns a registered trademark and wants to transfer the ownership of that trademark to another person, this Trademark Assignment can be used. All Trademark Assignments should be in a written form, as it is a legal document.

With Trademark Assignments, it is easy to transfer the mark. The paper contains all the information needed to record the assignment with the United States Patent Office (USPTO). It is required to transfer registered trademarks with the USPTO.

The document differs from the Licensing Agreement because here, the full mark is being transferred to a new party. Meanwhile, in a Licensing Agreement, the mark is still owned by the original owner, but the other party pays royalties for permission to use it.

Note that the document differs from the Intellectual Property Release as well. Though it is also possible to use this document for a trademark, typically, it is used for copyrighted materials, for example, pieces of music or arts. This way, there is no payment, and the copyrighted works are "released" or given to another party. 

The document is also different from an Intellectual Property Permission Letter. In the letter, one party is requesting permission to use the intellectual property of another.  A Licensing Agreement, an Intellectual Property Release, and a Trademark Assignment can be done with the Intellectual Property Permission Letter, but it is not a legal document.  

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.

How to use this template

This document can be used to transfer the ownership of an existing trademark. In order to use the document, both parties should understand that the trademark will be assigned entirely. To be more precise, this document is not a license, and no royalties will be paid after the assignment.

The document contains all the information about the mark being transferred. It will also have details needed for recordation with the USPTO. Both parties can fill the document.

A completed document should be signed and executed in front of a notary. Then the parties should record the Trademark Assignment with the United States Patent and Trademark Office.

Applicable law

In the US, a federal statute called the Lanham Act governs the Trademark Assignments.  

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Trademark assignment—How-to guide

Find out more about business management

by   LegalZoom staff

Read more...

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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What Is a Trademark Assignment Agreement?

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What Is a Trademark Assignment?

How to record a trademark assignment, trademark assignment agreement template.

• Copyright Law

A Trademark Assignment Agreement is a legal document that allows parties, an assignor and assignee, to record the purchase and sale of a federally registered trademark. This is the document for you if you need to buy or sell a registered trademark or service mark and if you want to remove, add, or change the name of the owner of the mark. Whether your transaction involves a trademark, logo, or service mark, this agreement will help make the transfer of ownership legitimate.

Alternate Name:

• Trademark Assignment Contract.

If you need to transfer an owner's rights, interest, and title of a trademark or service mark, you may download a Trademark Assignment Agreement template below or draft a more personalized document using our online form builder.

A "trademark assignment" means the transferring party (the assignor) transfers to the receiving party (the assignee) the property rights in a trademark or service mark. When you assign the trademark, you also convey the goodwill or business associated with it - a transfer of ownership without goodwill is invalid. A trademark or service mark is a valuable asset and prized possession because it helps the customer to quickly associate specific qualities with a recognizable brand. A proper assignment of trademark will prevent the loss of time, money, and image for both parties .

The assignment of a legally recognized symbol, word, phrase, or design must be done in writing to provide a record of ownership and transfer and protect the rights of both parties in case of a potential dispute or disagreement. To be valid, a Trademark Assignment Agreement has to include the following information:

• Identification. The names of the assignor and the assignee, their addresses, and telephone numbers .
• Trademarked Item. Description of the trademark to be assigned and any relevant registrations or applications for the mark. The assignor transfers to the assignee all the interest in the mark, including the income and royalties payable to the assignor regarding the mark and all rights to sue for the infringement or misappropriations of the mark.
• Warranty. The assignor confirms the legal ownership of all rights, title, and interest in the trademark and certifies that the trademark has not been previously assigned, encumbered, or pledged - that is, the agreement will not infringe on the rights of another individual or entity.
• Purchase Price. Any trademark has a monetary value, so the assignee must pay the assignor a consideration. Before you sell all of your rights in a trademark, make sure this is the best course of action for you and your business - that one-time payment is all that you will receive for the trademark.
• Verification. Signatures of the parties and the actual date of signing.

Both parties are highly encouraged to review the agreement carefully to ensure the inclusion of all relevant deal points - state expressly all the expectations and terms, it is better to be over-inclusive.

You may obtain a notary seal if you wish - the notarization is not strictly required, but recommended. Once the assignment is recorded, the assignee must register it with the U.S. Patent and Trademark Office, otherwise, the agreement will not be effective. You can do it online via the Electronic Trademark Assignment System or by mail - complete the Recordation Form Cover Sheet to transfer ownership and mail it to the Mail Stop Assignment Recordation Branch, Director of the US Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.

Related Templates and Topics:

• Confidentiality Agreement ;
• Non-Disclosure Agreement ;
• Copyright Infringement Notice .

Download Trademark Assignment Agreement Template

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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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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.

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• 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

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Trade Mark Assignment Agreement

A Trade Mark Assignment Agreement ("Assignment Agreement") is a legal document under which the Trade Mark owner, known as the "Assignor," assigns another person or entity to own such rights, known as the "Assignee", in exchange for an agreed payment, known as a "Consideration".

Trade Mark is a word or symbol representing a company or product. A Trade Mark can be one that is registered under the Trade Marks Act, 1999 or one that is established by continuous and prolonged use of such a word or symbol in relation to a particular company or product. For example, APPLE, GOOGLE, TATA, etc.

As per the Trade Mark Act, 1999, the Assignment of Trade Mark has to be done by execution of the assignment deed in writing. Both the registered and unregistered Trade Mark under the Act can be assigned to a third party.

An assignment Agreement is different from a License Agreement , under an Assignment Agreement, the Assignor gives away all the rights over the Trade Mark for a fixed amount or consideration and will not be entitled to use such Trade Mark or receive regular Royalty payments on it. On other hand, under the License Agreement , the owner of the Trade Mark grants permission to another person to utilize the Trade Mark in a particular manner for a limited period of time.

The Assignment Agreement can be of two types:

• Assignment with goodwill: The Assignor transfer absolute rights and values associated with the Trade Mark to the Assignee. After entering into this Agreement, the Assignor will not be able to use any goods or services related to the Trade Mark. For example, ABC Ltd owns a Trade Mark with the wordmark "GREENGO" registered under classes 35 and 42. Under this arrangement, ABC assigns all its rights over the Trade Mark "GREENGO" in relation to Classes 35 and 42 along with any other classes registered in the future.
• Assignment without goodwill: Under this, the Trade Mark related to particular goods or services will be assigned to the Assignee and the Assignor will retain the right to use and assign the goods or services which are not assigned to the Assignee under this Agreement. For example, XYZ Ltd owes a Trade Mark with the wordmark "ORANGE TECH" registered under classes 30 and 39. Under this arrangement, XYZ assigns the Trade Mark to the assignee only in relation to class 30 and retains the rights over class 39 and any future classes under the same name.

Restrictions on assignment of Trade Mark:

• Restriction on assignment or transmission where multiple exclusive rights would be created . Thus, the same or similar goods or services cannot be assigned to different entities or people. If different Trade Marks are assigned, such assignments should not cause any confusion among the users of such goods or services.
• Restriction on assignment or transmission when exclusive rights would be created in different parts of India. Thus, the Trade Mark cannot be assigned to different people on a geographical basis within the boundaries of India.

How to use this document?

This Agreement covers the following major provisions:

• Parties: The type and details of the parties i.e. Assignor and Assignee are included under this Agreement. The Parties can be an individual, company, partnership, LLP and so on.
• Description of Trade Mark: the details about the Trade Mark can be mentioned under this Agreement. If required, a detailed description can be mentioned under Schedule-A to the Agreement.
• Assignment of Trade Mark : defines the assignment of Trade Mark and denotes whether the Trade Mark is assigned with or without the goodwill.
• Consideration: It includes the method of calculation of consideration payable by the Assignee, how it will be paid to the Assignor and who will bear the cost of GST (Goods and Services Tax) payable on such transaction. This clause also includes the penalty for any late payment of Consideration by the Assignee.
• Warranties: The warranties or promises by both the Assignor and Assignee regarding their capacity to enter into this Agreement, ownership over the Trade Mark, compliance with the terms of this Agreement and laws are included. If required, such additional warranties can be mentioned under this clause.
• Confidentiality: Under this, both parties agree not to disclose confidential information including trade secrets, know-how, plans and so on to any third parties. If required, a separate detailed non-disclosure agreement can be signed between the parties.

Once the details are filled in, this Agreement can be printed on non-judicial stamp paper of value prescribed by the concerned state where this Agreement is executed. The Agreement has to be signed by two independent witnesses who are not a party to this Agreement and must be notarized by a notary located in the place where this Agreement has been executed.

Once the Agreement is executed and notarized, it needs to be registered with the Registrar of Trade Mark within six months.

Applicable Law?

Assignment of the Trade Mark is covered under the Trade Marks Act, 1999. Only those assignment agreements registered with the Registrar will have protection under this Act.

An Assignment Agreement is a contract and general principles of the Indian Contract Act, 1872 will be applicable.

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Other names for the document:

Trademark Assignment Agreement, Assignment of Trade Mark Agreement, Agreement to sell a trade mark, Assignment of goods trade mark, Assignment of service trade mark

Country: India

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Starting a trademark assignment request in Assignment Center

Learn how to start a trademark request in Assignment Center. Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks.

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All you need to know about Trademark Assignment Process in India

Trademarks are the most prominent way to protect brand identity in this competitive market. However, it also helps in growing your brand and business as a whole. One such way of growing your business is through transfer of trademark ownership in certain situations. Hence, to shed some light on this feature of trademarks, we will discuss the entire trademark assignment process in detail. Moreover, the trademark transfer process also helps in instant monetary benefits along with reduced costs of maintenance of IP rights. So, let’s dive into the process of trademark assignment, documents required and its fees in India. 

What is the Trademark Assignment Process?

Trademark assignment is popularly also the transfer of trademark ownership. The term assignment denotes the transfer of complete or partial transfer of trademark rights from the assignor to the assignee. Moreover, once you learn how to transfer trademark ownership , you can easily start getting the monetary benefits of registering your mark. The trademark assignment process involves a multitude of factors, which we will discuss in this article. 

Also Read: What is Trademark Objection Reply

Types of Assignment to Transfer Trademark Ownership 

The following are the different types of trademark assignment processes in India: 

Complete Assignment

In this type, all titles, rights, and interest in the trademark are also assigned from the assignor to assignee. Here, the assignee becomes the new owner of the trademark. 

Partial Assignment

Many times, for business collaborations, only parts of trademark rights are assigned. When this happens, the trademark assignment process can include limitations of to specific geographical location, goods or services, or a specific duration as well. In this type of trademark assignment process, the whole ownership of a mark is not transferred. 

Assignment with Goodwill

In this type of assignment process, not only the trademark ownership is transferred, but also the goodwill associated with it becomes the assignee’s. 

Assignment without Goodwill

When the goodwill of a mark stays with the previous owner, the process of transfer is “assignment without goodwill”. 

Also Read: Objection under Section 9 of Trademark Act

Essential Features of Trademark Assignment Process

The process of trademark assignment in India must fulfill the following characteristics:

Transfer of Ownership

Whether complete or partial, in transfer of trademark rights, transferring the ownership is a must. 

No Objection of Prior Owner

The assignor should not have any objections with respect to this transfer of trademark ownership. 

Written Agreement

To execute an assignment process in India, the assignor and assignee mandatorily need to enter into a written agreement. 

Consideration 

All trademark assignments happen in exchange for a consideration. Hence, there has to be a monetary consideration that the assignor obtains in exchange of the transfer of ownership. Moreover, providing the proof of this consideration amount also forms an important part of the trademark assignment documents. 

Record 

The transfer of rights must be recorded by the trademark registry. Hence, the parties will have to submit their written assignment deeds in the appropriate trademark form to the registry with the fees for trademark assignment. 

Also Read: Trademark Registration Process in India

Documents Required for Trademark Assignment in India

Below is the list of documents required for the process of trademark rights transfer –

Power of Authority (from Assignor & Assignee)

Both the parties to the process, are required to submit an integral trademark assignment document, ie., power of attorney. The meaning of power of attorney is to authorize the legal professional to act on the parties behalf. This will help the parties in maintaining the terms of assignment deed without any disputes. 

Trademark Assignment Agreement

From the list of all trademark assignment documents, most important is the assignment deed. It is a written contract that makes the transfer of trademark rights enforceable. Moreover, it is also a document that acknowledges the transfer of rights and responsibilities from one person to another. 

This is the only document that clearly shows –

• The change of ownership of a trademark.
• The interest of the parties.
• The rights and obligations of parties.

The assignment agreement is enforceable in India if the parties duly execute it with appropriate stamp duties, notary and signature of the parties.  The parties can keep a copy of the trademark assignment agreement. One has to submit thThe originals are to be submitted to the appropriate trademark registry to give effect to the change of title of the trademark.

No Objection Certificate (executed by the Assignor)

A no-objection certificate encapsulates the assignor’s wish to transfer the trademark ownership. Further, the trademark assignor also agrees that they have no objection to such a transfer of right.

Goodwill Certificate (given by the Assignor)

One needs this document when they are transferring the trademark owner’s goodwill along with the trademark. Basically, a goodwill certificate provides that the assignor has a right to all entitlements related to the qualitative value in a trademark and the assignor is transferring his/ her rights in a trademark to another person. Generally, this document allows the assignee to acquire all entitlements and values associated with the trademark and a right to unconditionally use the trademark for any of the goods and services.

Acceptance of Trademark Rights (provided by the Assignee)

Another important trademark assignment document is a document confirming the consent of the assignee with respect to the rights transferred to him. 

Trademark Assignment Process

You can transfer trademark rights before or after the registration process is complete. Trademark rights can be transferred either before the trademark is registered or once the trademark is successfully registered. You should note that the trademark assignment documents requirement will remain the same in both situations. Hence, for transfer of rights before registration, you should file a request for trademark rights transfer through Form TM – M . Moreover, for trademark assignment after a successful trademark registration, Form TM – P is to be applicable along with the prescribed fee. It is always advisable to seek professional assistance while going for a trademark assignment process in India. Let’s see the step by step process below: 

Identify Parties

The first step to transferring the ownership rights of a trademark is to identify all the parties to assignment. These parties are assignor and assignee. 

Draft the Deed

Then, the parties collectively need to discuss the terms of their agreement and draft it accordingly. 

Record Assignment With Registry

In this step, the parties need to submit the form applicable and pay the requisite fee for trademark assignment. 

Notification From Registry

After submission of the form and details, the parties will receive a notification from the registry. This happens at least 8 to 9 months after the first submission. In this notification, the registry may either approve the assignment, or raise their concerns, if any. Once you resolve this query, the assignment process is complete. 

In conclusion, the trademark assignment process is a simple way of transferring the ownership rights in a trademark from one party to another. This also makes it possible to transfer ownership from an individual to his new company, or from a defunct company to its shareholder. The assignment process makes it easy to manage the wealth of intellectual property rights. Besides, you can always reach out to the Legalwiz.in experts to simplify the process for you! 

Frequently Asked Questions

Yes, a trademark assignment deed must be in writing to make it enforceable. 

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

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

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Rohan Sharma

Rohan Sharma is a lawyer with a flair for writing. Rohan has a special interest in the domain of Intellectual Property Rights and possesses an extensive experience in the fields of trademarks, copyrights and industrial designs. Aiming to understand the intricacies of law as a concept and its symbiosis with advancing technology and changing societies, the author seeks to examine the nuances of law.

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