trade mark assignment agreement

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.

Transferring ownership/ Assignments FAQs

Assignment center coming .

On February 5, Assignment Center will replace the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration.

See our how-to guides on using Assignment Center for patents and trademarks . If you have questions, email [email protected] or call customer service at 800-972-6382.

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Browse FAQs

Transferring Ownership / Assignments

Transferring Ownership / Assignments, Procedures

You may contact the Assignment Center customer service desk at 571-272-3350 from 8:30 a.m. to 5 pm ET Mondays through Fridays, except on federal holidays. You may e-mail questions about electronic filing to [email protected] .

No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

No, these forms are not mandatory. However, the USPTO strongly encourages their use. Completing the forms in their entirety ensures that all the required information for recordation has been sent to the office. The forms are available in PDF-fillable format on the USPTO Forms page , thus making them quick and easy to prepare.

When these forms are received in the USPTO, they are scanned along with the supporting documentation. The bibliographic data from the cover sheet is then entered into the PTAS system and the documents are processed.

Payment may be made by use of a check, credit card, money order or USPTO deposit account if submitting documents in paper. Trademark assignments submitted electronically may be paid by credit card, USPTO deposit account or electronic fund transfer (EFT). The USPTO accepts VISA, MASTERCARD, AMERICAN EXPRESS and DISCOVER credit cards.

>> see How to Pay Fees for a current fee schedule and for more about fee payments

Essentially the rules:

(1) specify the minimum information about the transaction that must be submitted;

(2) require submitters to submit this information of a separate cover sheet; and

(3) specify that submissions must be legible and of such quality to permit processing; and

(4) pay the proper recording fee.

The rules permit submission of true copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

The Assignment Recordation Branch in the Public Records Division processes and records assignment documents for both patent and trademark properties.

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Trademark Assignment Agreement

Template Description

Paper titled "Trademark Assignment Agreement"; the Copyright sign, magnifier, man and woman talking

In today’s business environment, it has become expected for business entities to establish a brand identity or, perhaps, a unique selling point for themselves. This generally becomes the intellectual property of the business entity and, therefore, needs to be protected. Business owners understand that, among all the company’s valuable intellectual assets, trademarks remain central to the business. The trademarks involving the brand identity, reputation, products, or services of a business should then be well protected.

On occasion when a company needs to transfer trademark ownership rights to a third party, the parties will sign a trademark assignment agreement. This document clearly expresses the terms under which one party transfers trademark ownership rights to another party. Using a trademark assignment form can help to ensure that the intellectual assets are not exploited and that the original owner receives due rewards for the work. A customizable trademark assignment agreement template offers convenience whenever one party requires a contract to allow another party to profit from established trademarks.

What Is a Trademark Assignment Agreement?

A trademark assignment agreement is a legal document that allows one party to transfer ownership, rights, and privileges of a trademark to another person, business, or entity. A trademark could be a picture, logo, word, phrase, or anything distinctive that is associated with a brand.

To illustrate, a small coffee shop owner has built a popular brand around a special blend of coffee beans. The business has a unique logo and motto that people easily associate with the brand. Later, for whatever reason, the owner decides to sell the business along with all the known trademarks, including the coffee bean recipe, logo, and motto. The parties will need to use a trademark assignment agreement to formalize the sale and transfer the trademark rights to the buyer. This will help to ensure a smooth legal transition of the business’s trademark assets to the other party. The business owner and the buyer can look over a trademark assignment agreement sample to be sure the final document correctly reflects their agreed terms.

Parties of the Trademark Assignment Agreement

A trademark assignment agreement usually involves two main parties, the assignor and the assignee. Each party has very distinct duties throughout the process of the trademark transfer. Both parties have a working understanding of their roles as expressed in the trademark assignment agreement, and each of the parties contributes significantly to the successful outcome of the agreement.

Assignor: The assignor is the individual or entity that currently owns a trademark and wishes to transfer that trademark right and ownership to another party.
Assignee: The assignee is the recipient of the trademark rights and ownership. An assignee may be an individual, a business entity, an institution, or any other legal entity that seeks to acquire the trademark for reasons agreed to by the assignor.

Some common keywords or concepts that a trademark assignment agreement usually includes are:

Trademark: This is any unique symbol, sign, design, word, phrase, or combination of any of these that distinguishes a business’s products or services from those of other businesses. For example, popular brands like Facebook, “X” (formerly Twitter), and McDonald’s each have one or two distinctive symbols or logos that make each brand unique.
Assignment: An assignment is the actual transfer, allocation, or handover of the ownership and rights to the trademark from the assignor to the assignee. Simply, one party assigns specific trademark rights to another party.
Consideration: Consideration is the value or benefit that the parties agree to exchange in return for the trademark transfer. This could be money, equity, or another item of value.
Representations and warranties: These are the guarantees that one party, usually the assignor, gives to the other party about the authenticity, actual ownership, and non-interference of the trademark.
Indemnification: When either party suffers a loss, damages, or legal action arising from any misrepresentation in the transfer of the trademark rights, the party responsible would be liable for the losses suffered.

Importance of a Trademark Assignment Agreement

There are several very important reasons to sign a trademark assignment agreement when you intend to transfer trademark ownership to another entity, including the following.

Ensuring Legal Ownership

A trademark assignment agreement form serves as a vital legal document that verifies the exclusive proprietorship and command of the trademark. A party entering into a trademark assignment agreement assures the other party of the right to use the trademark, thus minimizing the potential for disagreements or legal issues. The contract lends the reassurance needed to use the trademark confidently across various business undertakings as agreed by the parties.

Protecting the Assignee’s Investment

Finalizing discussions around the compensation to be exchanged for the transfer of trademark rights should precede the signing of the trademark assignment agreement. The negotiated consideration could be monetary or any other valuable metric as mutually agreed by the parties. The agreement safeguards the assignee’s investment by acknowledging the rights being transferred — to use the mark and potentially earn returns.

Avoiding Confusion and Disputes

Any human interaction has the potential for conflict, including the process of drafting a trademark assignment agreement. However, when there is clarity about the scope and responsibilities of each party as they relate to the transfer of trademark ownership rights, conflicts can be averted. Reviewing a sample assignment agreement will help the parties know which custom-made provisions to add to avoid problematic confusion and potential disputes.

Providing Licensing

There are some circumstances in which the assignor does not transfer the full ownership rights to the other party. In these cases, the assignor may reserve certain rights to use the trademark after transferring the listed rights to the other party. Licensing provisions are made in the trademark assignment agreement that allow the assignor to retain restricted use of the trademark while the assignee gains broader rights.

Facilitating Mergers and Acquisitions

When two businesses intend to merge, or one business acquires the other, trademark ownership forms a very important part of the transaction. After discussions have been finalized and both parties agree on the transfer of trademark rights, a trademark assignment agreement will be drafted and signed to formalize the process.

What Should be Included in a Trademark Assignment Agreement?

Lawrina’s trademark assignment agreement template contains several standard sections and clauses. Each clause deals with specific aspects of the trademark transfer. Consider the following parts to include in your agreement.

Introduction

The trademark assignment agreement form will have an introduction, an overview of the entire agreement that also introduces key sections of the contract. A trademark assignment agreement sample provides a simple and concise intro as a starting point.

The recitals are like a preamble of the trademark assignment agreement. They provide the general background and purpose of the agreement. This section also gives details about the parties and the trademark being assigned. A trademark assignment agreement form will have space for the appropriate details.

Assignment of Marks

This section of the trademark assignment agreement is for the trademark that is being assigned. This includes the names of the trademark being transferred, its registration details, the design or logo, and any other related information.

Consideration

The consideration is the value or benefit that the assignee offers to the assignor for the trademark rights. Therefore, this must be included in the trademark assignment agreement. In this section, the parties will describe the monetary consideration, equity, or any other asset of value that is being given in exchange for the trademark. The details in this part of the agreement must clearly reflect what is being offered and what is being received, including deposits, payments, and due dates as applicable.

To ensure the validity of the trademark ownership, the assignor must guarantee that the trademark is authentic and free from all risk or liability. Therefore, the trademark assignment agreement template has space to state all the warranties expressed by the assignor to the agreement.

The assignee also must provide representations and warranties. For example, in the trademark assignment agreement, the assignee must attest to having the capacity to receive and use the trademark being assigned.

No Early Assignment

In the trademark assignment agreement, it is necessary to conclude all approvals and formalities before signing to prevent the inchoate transfer of trademark ownership. This clause states that the assignment or transfer will only take effect when the transaction is concluded between the parties.

Documentation

This section deals with relevant documentation that must be provided to facilitate the transfer of the trademark. These include all the trademark certificates, documents, or other relevant records on the trademark. The trademark assignment agreement template will give an insight into the necessary documents.

No Further Use of Marks

In order to avoid confusion in the market, the assignor must agree, using the trademark agreement form, not to use the transferred trademarks after the assignment. In some cases, certain continued use is permitted and will be detailed in the contract.

Indemnification

As mentioned earlier, this section of the trademark assignment agreement covers which party will bear what liabilities should certain situations arise. Also included may be notes to help the parties prevent certain losses rather than simply the details of financial recovery.

Successors and Assigns

Included in the trademark assignment agreement template will generally be a statement permitting the assignee’s successors, assigns, or designated representatives to transfer the trademark ownership rights.

No Implied Waiver

A party to the trademark assignment agreement cannot imply a waiver where there is a failure to exercise a right under the contract. In other words, the failure of a party to exercise a right cannot be interpreted as the party’s forsaking the right.

In the trademark assignment agreement template, this part provides the procedures, duration, form, and manner of notice required when vital information is to be communicated between the parties.

Governing Law

This part of the trademark assignment agreement form stipulates the law under which the agreement will be governed. Except as agreed by the parties, this is usually the jurisdiction in which the trademark was registered.

Counterparts/Electronic Signatures

In this section, the parties may agree to several counterparts of the trademark assignment agreement that may be executed. They may also note whether electronic signatures will be considered valid.

Severability

In the event that any part of the agreement is later considered unenforceable, the parties agree to sever that part from the whole so that it will not invalidate the other parts of the agreement.

Entire Agreement

By including this clause in the trademark assignment agreement, the assignor and assignee confirm that the document constitutes the entire legally binding agreement between the parties.

List of Trademarks

A schedule or appendix that outlines all the trademarks included in the agreement may be added for easy reference. A carefully drafted trademark assignment agreement template will include space for this information.

When Is a Trademark Assignment Agreement Needed?

A trademark assignment agreement is necessary when any trademark is subject to be transferred from one owner to another.

Common Use Cases

Business expansion: A thriving business that requires expansion into new locations or new markets may need to have a trademark assignment agreement to enable the transfer of trademark ownership rights to those places. The trademark laws associated with the host or parent company may be different from those of the new locations. As such, a trademark assignment agreement can facilitate a successful transition.
Mergers and acquisitions: In a typical merger or acquisition, the assets of one company will have to pass to another company. These assets include trademarks. Therefore, a trademark assignment agreement would be needed to ensure the proper transfer of trademark ownership between the parties.
Brand licensing: Once a business has a reputable brand identity, people or businesses may wish to affiliate with the brand. They will require the owner’s permission to use the trademarks connected with the business’s products or service. The parties can use a trademark assignment agreement to stipulate the terms and manage the expectations of the parties. A sample assignment agreement written for this purpose will show the language necessary for this type of agreement.
Ownership change: When the ownership of a business changes, trademark rights generally must also change and be transferred to the new business owner. To make this happen, the parties will need to draft a trademark assignment agreement.

When Not To Use the Trademark Agreement

When there is only a temporary need to use a trademark, a trademark assignment agreement is not needed. In these cases, it may be sufficient to use a licensing agreement that gives the recipient the authority to use the trademark within a limited period of time.

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Please note that Lawrina does not provide any legal services. The information on Lawrina’s Site and its downloadable content, including legal articles and templates, shall not be considered legal advice and is not guaranteed to be correct, complete, and up-to-date. If you require legal advice on your issue, we recommend you contact a qualified attorney licensed in your state. You personally assume full responsibility for any consequences, damages, and costs associated with your use of any content of Lawrina Services available on Lawrina’s Site.

By using Lawrina’s Site you agree with mentioned above and give your irrevocable consent to comply with and to be bound by the provisions of Lawrina Service terms.

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Template Benefits

Frequently Asked Questions

While a notary’s signature is not a strict requirement, it does provide an extra layer of authenticity that the parties truly have agreed to be bound by the trademark assignment agreement form.

Yes, a written agreement, such as one that can be created using a trademark assignment agreement template, will serve as evidence. This document specifically shows the transfer of ownership rights of a trademark or trademarks. The contract can also be used to enforce a party’s rights should any dispute arise.

In a trademark assignment agreement, the trademark ownership right usually is totally transferred from one party to another party. The other party becomes the owner of the trademark. On the other hand, licensing a trademark allows one party to give temporary permission to another party to use the trademark under specified circumstances. The ownership right ultimately goes back to the original owner after the agreed timeline.

Trademark Assignment Agreement

Used 4,885 times

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

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Prepared for:

[Assignor.FirstName]

[Assignor.LastName]

Prepared by:

[Assignee.FirstName] [Assignee.LastName]

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

The terms of this agreement are as follows:

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

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

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

Legal Obligations

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

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

Transfer Timeline

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

Governing Law

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

Severability

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

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

Additional Provisions

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

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

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

[Assignor.FirstName] [Assignor.LastName]

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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 Agreement

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A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the terms and conditions of the transfer.

A properly executed trademark assignment agreement can help ensure that the new owner has full legal rights to use, sell, or license the trademark while protecting the interests of the original owner. This type of agreement is commonly used in business transactions such as mergers and acquisitions, where trademarks are often valuable assets.

Essential Elements of a Trademark Assignment Agreement

A trademark assignment agreement in California must meet certain requirements to be legally binding and enforceable. Here are some of the essentials of a trademark assignment agreement in California:

The agreement must identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement must clearly state that the current owner (assignor) is transferring ownership of the trademark to the new owner (assignee). It should also state that the assignor has the legal right to transfer trademark ownership.

The agreement should specify the consideration that the assignee provides in exchange for transferring the trademark. It can be a monetary payment or other valuable consideration.

The agreement should contain representations and warranties by both the assignor and assignee, such as the assignor's ownership of the trademark and the assignee's ability to use and exploit the trademark.

The agreement should include a provision for the assignment of goodwill associated with the trademark, which refers to the intangible value of the trademark's reputation and customer loyalty.

The agreement may also include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others.

The agreement must be signed by both the assignor and assignee and should include the date of execution.

Overall, a trademark assignment agreement in California should be clear, concise, and comprehensive and accurately reflect both parties' intentions.

Importance of a Trademark Assignment Agreement

A trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. Here are some reasons why a trademark assignment agreement is important:

A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark.

A trademark is a valuable asset representing a business's goodwill and reputation. A properly executed trademark assignment agreement helps to protect the assignee's investment by ensuring that they have the legal right to use and exploit the trademark.

A trademark assignment agreement can help avoid confusion and disputes over trademark ownership. It provides a clear record of the transfer of ownership and can be used as evidence in case of any legal disputes.

A trademark assignment agreement can enable the assignee to license the trademark to others. It can be a valuable source of income for the assignee and help increase the trademark's value.

A trademark assignment agreement is often used in business transactions such as mergers and acquisitions, where trademarks are a valuable asset. It helps to ensure that the transfer of ownership is legally valid and provides a clear transaction record.

Overall, a trademark assignment agreement is an important legal document that helps to protect the interests of both the assignor and assignee. It provides a clear record of the ownership transfer and can help avoid confusion and disputes over ownership of the trademark. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Common Mistakes to Avoid in Trademark Assignment Agreement

When drafting or executing a trademark assignment agreement in California, several common mistakes should be avoided to ensure the agreement is legally valid and enforceable.

The agreement should identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement should include all parties involved in transferring the trademark, including any successors or assigns. Failing to include all parties can result in a lack of clarity over who owns the trademark.

The agreement should specify the assignee's consideration in exchange for the trademark transfer. If the consideration is not accurately described, the agreement may be challenged as unenforceable.

The agreement should include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others. Failing to address these rights can result in a lack of clarity over the assignee's legal rights to use and exploit the trademark.

The agreement must be signed by both the assignor and assignee and should include the date of execution. Failing to obtain proper signatures can result in a lack of clarity over whether the transfer of ownership is legally valid.

Trademark law can be complex and nuanced. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Overall, it is important to carefully draft and execute a trademark assignment agreement in California to ensure it is legally valid and enforceable. Avoiding these common mistakes can help to ensure that the agreement accurately reflects the intentions of both parties and protects their legal rights.

Key Terms for a Trademark Assignment Agreement

Trademark: It is a recognizable sign, design, or expression that identifies and distinguishes the source of a product or service from those of others.
Assignor: The assignor is the party currently owning the trademark and transferring ownership to another party through the trademark assignment agreement.
Assignee: The assignee is the party acquiring ownership of the trademark through the trademark assignment agreement.
Goodwill: Goodwill is the intangible value associated with a trademark built up through the use and reputation of the mark in the marketplace.
Consideration: It refers to the compensation or value exchanged between the assignor and assignee as part of the trademark assignment agreement. This can include monetary payment, goods or services, or other forms of value.

Final Thoughts on a Trademark Assignment Agreement

In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.

When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.

Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.

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Meet some of our Trademark Assignment Agreement Lawyers

Diana is a registered patent attorney and licensed to practice law in Florida and in federal courts in Florida and in Texas. For nearly a decade, Diana has been known as the go-to brand builder, business protector, and rights negotiator. Diana works with individual inventors, startups, and small to medium-sized closely held business entities to build, protect, and leverage a robust intellectual property portfolio comprising patents, trademarks, copyrights, trade dress, and trade secrets.

Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.

I am a Swiss-American lawyer based in Florida and specialize in business, investments, and other civil matters. I have won many cases in both state and federal litigation, and arbitration. Before litigation or arbitration, however, I like to prevent these legal disputes by ensuring my clients base their business on strong concrete contracts that will protect them even decades down the road. My clients are my top priority, which is why they get my personal cell and can reach me anytime. My firm is also established on the extremely high standards of professionalism, transparent itemized billing, fast turnaround times and more. For more information, visit: https://www.transnationalmatters.com/

Matt Curry is a seasoned attorney specializing in real estate law and contract matters. With a deep understanding of contract law and extensive experience in negotiating and drafting contracts, Matt has earned a reputation for providing exceptional legal counsel to clients. As the founder and principal attorney at MPC LAW, Matt is committed to delivering tailored legal solutions. MPC LAW is renowned for its expertise in real estate transactions, lease agreements, contract negotiations, and dispute resolution. Matt's approach combines legal acumen with a client-centered focus, ensuring that every client receives personalized attention and strategic advice. Whether navigating complex real estate deals or resolving contractual disputes, Matt and his team at MPC LAW consistently achieve favorable outcomes for their clients. With a track record of success and a commitment to excellence, Matt Curry and MPC LAW are trusted partners for individuals and businesses seeking reliable legal counsel in real estate and contract matters.

I am a Partner at Kashyap Partners (operating in California, New York and New Jersey), along with it's sister firm in India. I have been working as a technology, transactional and data privacy lawyer for 5 years with a specialisation in start-up law.

Ms. Melton-Mitchell is a seasoned executive that has obtained a law degree and is practicing law as a second career. She has spent over 25 years in the health care industry and is well versed in health law, contract law, financial law, trusts and estates, M&A and other types of transactional law. She maintains evening and weekend hours to allow clients flexibility in connecting with her around their schedule.

I have practiced civil law for 13 years and have concentrated my practice serving the construction and real estate industries.

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TRADEMARK ASSIGNMENT

THIS TRADEMARK ASSIGNMENT (the "Assignment") dated this ________ day of ________________, ________.

____________________ of ____________________

(the "Assignor")

(the "Assignee")

The Assignor is the owner of the following trademark (the "Mark"): ____________________________________________________ ____________________________________________________ ____________________________________________________ ____________________________________________________
The Mark is registered at the United States Patent and Trademark Office as #_______________________.
The Assignor, in consideration the Price, the receipt and sufficiency of which is hereby acknowledged, does sell, assign and transfer to the Assignee the Mark, together with that portion of the good will of the business with which the Mark is associated, and all right, title and interest in the Mark, including, but not limited to, the right to register the Mark, to renew registration of the Mark and to license the use of the Mark.
The Assignee, in consideration of the Assignor assigning the Mark to the Assignee on the terms in this Agreement, will pay to the Assignor the following amount: $__________ (the "Price").

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What is a Trademark Assignment?

A Trademark Assignment is a document that transfers the ownership of a trademark from one party to another . It moves the rights and interest of the trademark from the owner to the recipient.

A Trademark Assignment is also known as a:

Trademark assignment agreement
Trademark transfer agreement
Assignment of trademark

Important terms

Some terms that are important to know:

The assignor owns the trademark and is transferring it. They can be a person or organization.
The assignee is the recipient of the trademark. This can be a person or an organization.
A trademark is a form of intellectual property . It is a mark used to identify or distinguish goods. The mark can be a word, a phrase, a design, or a symbol.
A service mark is a form of intellectual property, very similar to a trademark. Where a trademark is used to identify goods, a service mark is used to identify or distinguish services.

When should I use a Trademark Assignment?

Use a Trademark Assignment when you’re looking to transfer your ownership of a trademark or a service mark to someone else. A Trademark Assignment can transfer both registered and unregistered trademarks.

You can use a Trademark Assignment in any of the following situations:

If you’re selling the trademark, you can transfer the ownership of the mark to the buyer.
After a business sale , you can sell or transfer the trademark of your business to the new owners.
If you have started a new business , you can use a Trademark Assignment to transfer a trademark from your old business to the new one.
You can transfer a trademark to someone without payment in return, as a gift or consideration.

If you’re looking to assign a trade name, use an Assignment of Trade Name . If you need to assign a contract, personal property, or a different form of intellectual property, use a general Assignment .

What’s the difference between a Trademark License and a Trademark Assignment?

Where licensing permits the use of a trademark, an Assignment transfers the ownership entirely. A license means that you are still the owner of your trademark, with all the rights attached, and you’re simply letting someone else use your trademark temporarily. An Assignment is a permanent solution that transfers all the rights of ownership to someone else.

Do I need to register a Trademark Assignment?

Having to register a Trademark Assignment depends on whether a trademark is registered in the first place. Let’s break it down:

Registered trademarks (federal) : If you’re assigning a trademark that is registered at the federal level, register the transfer of ownership with the United States Patent and Trademark Office (USPTO) .
Registered trademarks (state) : If the trademark is registered at the state level, register the transfer with the state trademark or registry office.
Unregistered trademarks : If your mark is unregistered, you don’t have to register the transfer. An unregistered trademark can still be protected by common law , but registering a trademark will offer exclusive rights that can help protect the brand.

What are the representations and warranties in a Trademark Assignment?

A Trademark Assignment often contains a section of representations and warranties.

A representation means a statement of fact, while a warranty means a guarantee. The representations and warranties section contains facts that the assignor guarantees are true.

When creating a Trademark Assignment, you can choose which ones of the following representations and warranties to include. If you choose to include any representations and warranties it means that you guarantee these are factual statements at the time of signing .

How do I make a Trademark Assignment?

Follow these steps to create your Trademark Assignment:

Give details on all parties

Include information on the assignor and the assignee. You will need to include full names and addresses for all parties. You can add multiple assignors and assignees.

Include information on the trademark

Describe the trademark that is being transferred. You will need to:

Clarify if the mark is a trademark or a service mark.
Describe the mark. If it is a word or phrase, spell it out as it’s used. If it’s a design or symbol, include a picture.
Include the registration number and name of the registry, if the mark is registered. If the mark is not registered, name the geographical area it has been used in. If the mark is currently pending registration, name where it will be registered in the future.

Set the price

Name the price of the mark and when it will be paid.

Include representations and warranties

Choose which representations and warranties to include. Choose only the ones you can guarantee are factual at the time of signing.

Date and sign

Set a date to sign the Trademark Assignment. Both parties should date and sign the document.

Does a Trademark Assignment need to be notarized?

Notarizing a Trademark Assignment can be beneficial because a notary public can verify the identities and signatures of everyone involved. A notary can also confirm that each party is signing the agreement voluntarily and that everyone understands the content of the agreement, which can help avoid future disputes.

It’s not compulsory to have a Trademark Assignment notarized, but it could be valuable, since a notary seal adds a layer of protection and credibility to the document.

Consider if online notarization would help make the notary process more accessible. Our Online Notary service is available and legal in all 50 states.

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party. Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient. Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement. A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

All involved parties – the assignor and assignee – should be identified.
The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
Consideration must be listed (i.e. what each party is receiving).
List the effective date of the transfer.
Contract must be duly executed.
Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public. It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
Sale of business : A trademark owner may decide to focus on a different business or retire.
Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution. Documenting assignments after the fact is definitely not a best practice and can lead to many issues. It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive. An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue. A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor. A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized. Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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Step-by-Step Guide to Drafting a Trademark Assignment Agreement

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Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom. Also note: This is not legal advice.

Introduction

Drafting a trademark assignment agreement is an important part of protecting your business and its associated trademark rights. By clearly outlining the rights and responsibilities of both assignor and assignee, this document helps ensure that the trademark remains in your control and safe from potential infringement or competition.

For business owners, a trademark assignment agreement sets out the obligations of the assignor to protect and maintain the trademark, as well as granting exclusive rights to use it to the assignee. It also establishes any applicable fees or royalties due for using the mark, making sure that you are properly compensated should others wish to use it for their own purposes. This document can be used to prevent such unauthorised uses from occurring in the first place.

A properly drafted agreement also makes sure that you have legal title over your mark - enabling you to use it across multiple products, packaging and advertising without fear of being challenged for its ownership status. Furthermore, by having a legally binding contract in place between yourself (the assignor) and another party (the assignee), any potential infringers are made aware that using your mark without permission would carry legal consequences.

At Genie AI we understand how difficult drafting this kind of document can be - so we’ve created an open source legal template library with millions of datapoints teaching us what a market-standard trademark assignment agreement looks like. With our community template library at hand, anyone can draft and customise high quality legal documents without having to pay an expert lawyer - meaning you don’t need a Genie AI account just yet! Read on below for our step-by-step guidance on how to create your perfect draft agreement today!

Definitions (feel free to skip)

Lanham Act: A federal statute in the United States which provides for the registration and protection of trademarks in interstate commerce. Assignor: The person or entity transferring the trademark. Assignee: The person or entity receiving the trademark. Jurisdiction: The geographical area where a court has authority to hear a legal case. Non-compete clause: A clause in an agreement that restricts one or both of the parties from entering into a similar agreement with a competing entity. Confidentiality agreement: An agreement between two or more parties that requires them to keep certain information private. Consideration: Something of value given in exchange for something else. Indemnification clause: A clause in an agreement that protects one or both of the parties from certain legal liabilities. Specific performance: A court order that requires one or both of the parties to a contract to fulfill their obligations under the agreement.

Outline the purpose of the trademark assignment agreement
Explain the purpose of the agreement
Identify the trademark to be assigned
Discuss the relevant trademark law and regulations
Identify the applicable laws and regulations
Discuss how the laws and regulations will affect the agreement
Describe the parties involved in the agreement
Identify the assignor and assignee
Describe the relationship between the parties involved
Explain the scope of the agreement
Discuss the scope of the rights and obligations of the assignor and assignee
Outline the geographic extent of the assignment
Discuss the terms of the agreement
Outline the financial terms of the agreement
Identify any additional obligations or restrictions
Outline the obligations of each party
Describe the assignor’s obligations
Describe the assignee’s obligations
Detail the process for registration of the trademark
Discuss the process for filing of the trademark application
Explain the process for registration of the trademark
Discuss the grounds for termination of the agreement
Outline the grounds for termination of the agreement
Specify any notice requirements
Describe the remedies for breach of the agreement
Explain the remedies available to each party in the event of a breach
Outline the process for enforcement of the agreement
Explain the process for dispute resolution
Describe the process for resolving disputes
Discuss the parties’ rights and obligations during the dispute resolution process
Detail how to obtain the executed agreement
Explain the process for obtaining the signed agreement
Outline any additional steps required to complete the agreement

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Q: what is the difference between uk and us trademark assignment agreement.

Asked by Aiden on 11th May 2022. A: UK and US trademark assignment agreements are similar, but there are some important differences. In the UK, assignment agreements are governed by the Trade Marks Act 1994, which provides for the transfer of one party’s exclusive rights in a trademark to another party. In the US, assignment agreements are governed by the Lanham Act, which is a federal law setting out the rules for registering and protecting trademarks. The Lanham Act also provides for the transfer of ownership of a mark from one party to another. The key difference between the two jurisdictions is that in the US, an assignor must be registered in order to assign their trademark rights to a new owner. In the UK, registration is not required for an assignment agreement to be valid.

Q: Are there any specific industry-related considerations when drafting a trademark assignment agreement?

Asked by Landon on 15th August 2022. A: Yes, it is important to consider industry-specific issues when drafting a trademark assignment agreement. For example, if you are in the technology sector, you may need to include provisions regarding software updates, compatibility with other technologies, or any other industry-specific considerations that may be relevant to your particular business model or sector. Additionally, it is important to consider any applicable laws or regulations in your jurisdiction regarding trademark use and protection, as these may impact your agreement’s terms and conditions.

Q: How detailed should a trademark assignment agreement be?

Asked by Emma on 9th November 2022. A: A trademark assignment agreement should be as detailed as necessary to ensure that all parties understand their respective rights and obligations under the agreement. This should include details such as who will own the mark after the assignment takes place; what kind of license(s) will be granted; any restrictions on how the mark can be used; and any other details necessary to ensure that all parties understand what is expected of them under the agreement. It is also important to ensure that you include all necessary details so that both parties can enforce their rights if needed in the future.

Q: Is it possible to assign a trademark without registering it?

Asked by Ethan on 2nd February 2022. A: Yes, it is possible to assign a trademark without registering it depending on jurisdiction. In some jurisdictions such as the United States, registration of a mark is required for an assignor to transfer their rights in the mark to another party via an assignment agreement. In other jurisdictions such as the United Kingdom, registration of a mark is not required for an assignor to transfer their rights in the mark via an assignment agreement. It is important to research applicable laws and regulations in your particular jurisdiction before attempting to assign a trademark without registration.

Q: How do I protect my intellectual property (IP) when drafting a trademark assignment agreement?

Asked by Mason on 5th July 2022. A: It is important to protect your intellectual property (IP) when drafting a trademark assignment agreement by including provisions that clearly state who has ownership rights over any IP associated with the transferred mark and how it can be used. Additionally, you should consider including provisions that set out how disputes involving IP will be handled and any applicable time limitations on filing claims related to IP rights associated with the transferred mark. By doing so, you can ensure that both parties are fully aware of their respective rights and obligations under the agreement and that your IP is adequately protected from potential misuse or infringement by third parties.

Example dispute

Possible lawsuits involving trademark assignment agreements.

Plaintiff may sue if their trademark was assigned without their knowledge or consent.
Plaintiff may sue if the trademark assignment agreement was not honored or followed.
Plaintiff may sue if the trademark assignment agreement was not properly executed.
Plaintiff may sue if the trademark assignment agreement contains unfair or one-sided provisions.
Plaintiff may sue if the trademark assignment agreement contains ambiguous or vague language.
Plaintiff may sue if the trademark assignment agreement was obtained through fraud, misrepresentation, or duress.
Plaintiff may sue if the trademark assignment agreement was breached.
Plaintiff may sue if the trademark assignment agreement was not properly registered.
Plaintiff may sue if the trademark assignment agreement was not properly enforced.
Plaintiff may sue if the trademark assignment agreement was used to unfairly compete with them.
Plaintiff may sue if the trademark assignment agreement was used to infringe on their trademark.
Plaintiff may sue if the trademark assignment agreement was used to commit deceptive trade practices.
Plaintiff may sue if they have suffered damages as a result of the trademark assignment agreement.
Plaintiff may sue to seek an injunction to prevent further violations of the trademark assignment agreement.
Plaintiff may sue to seek monetary damages, including lost profits and/or attorney’s fees.

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Trade Mark Assignment Agreement

Specify the date on which this Agreement will come into effect.

TRADE MARK ASSIGNMENT AGREEMENT

This Trade Mark Assignment Agreement (the "Agreement" ) is made on this ________ ( "Effective Date" )

BY AND BETWEEN

________ , a company incorporated under the laws of ________ , with Identification No.: ________ , having its registered office at ________ represented by its ________ , ________ (hereinafter referred to as the "Assignor" which expression shall unless excluded by or repugnant to the subject or context be deemed to include its successors-in-interest and permitted assigns)

________ , a company incorporated under the laws of ________ , with Identification No.: ________ , having its registered office at ________ represented by its ________ , ________ (hereinafter referred to as the "Assignee" which expression shall unless excluded by or repugnant to the subject or context be deemed to include its successors-in-interest and permitted assigns)

(The Assignor and the Assignee shall hereinafter individually referred to as "Party" and collectively as "Parties")

WHEREAS the Assignor owns all right, title, and interest in and to the said, Trade Mark.

WHEREAS Assignor is willing to assign said Trade Mark to Assignee and the Assignor has the full right, absolute power, and lawful authority to sell, assign, and convey the same in the manner herein set forth.

WHEREAS Assignee hereby accepts the said rights, title, and interest in respect of the Trade Mark in accordance with the terms of this Agreement.

NOW, THEREFORE, the Parties seek to enter into this Agreement to confirm and record the terms and conditions on which the Assignor shall assign to the Assignee and other agreements in connection therewith.

1. DEFINITIONS AND INTERPRETATION

(a). "Agreement" means this Trade Mark Assignment Agreement.

(b). "Agreement Date" means the date marked at the beginning of this document ( ________ ).

(c). "Applicable Law" shall include all applicable (i) statutes, enactments, acts of legislature or parliament, laws, ordinances, rules, bye-laws, regulations, listing agreements, notifications, guidelines or policies of any jurisdiction; and (ii) judicial quasi-judicial and/or administrative decisions, interpretations, directions, directives, licenses, permits, judgments, writs, injunctions, arbitral awards, decrees, orders, terms and conditions of governmental or regulatory approvals or agreements with any governmental or regulatory authority.

(d). "Assignment" means an assignment in writing by the act of the parties concerned.

(e). "Governmental Authority" means any government authority, statutory authority, government department, agency, commission, board, tribunal or court or other law, rule or regulation-making entity having or purporting to have jurisdiction on behalf of India or any state or other subdivision thereof or any municipality, district or other subdivision thereof.

(f). "GST" means Goods and services tax under the Goods and Services Tax Act, 2017.

(g). "Trade Mark" means the Trade Mark as prescribed under this Agreement.

2. INTERPRETATION

(a). The headings in this Agreement are inserted for convenience only and shall be ignored in construing this Agreement.

(b). Unless the context otherwise requires, in this Agreement:

(I). words using the singular or plural number also include the plural or singular number, respectively;

(II). words denoting any gender shall include all genders;

(III). the words "written" and "in writing" include any means of visible reproduction;

(IV). the terms "hereof", "herein", "hereto" and similar words refer to this entire Agreement and not any particular Clause, or any other subdivision of this Agreement;

(V). the words "include" or "including" shall be deemed to be followed by "without limitation" or "but not limited to" whether or not they are followed by such phrases or words of like import;

(VI). references to any "person" include any natural person, corporation, judicial entity, association, statutory body, partnership, limited liability company, joint venture, trust, estate, unincorporated organization or government, state or any political subdivision, instrumentality, agency or authority; and

(VII). references to "Clause" or any other agreement or document in this Agreement shall be construed as references to the Clauses of this Agreement, or such other agreement or document, as may be amended, modified or supplemented from time to time, and shall include a reference to any document which amends, modifies or supplements it, or is entered into, made or given pursuant to or in accordance with its terms.

3. ASSIGNMENT OF TRADEMARK

(a). The Assignor grants the following property ("Trade Mark"):

Registration Number: ________ .

Registration Date: ________ .

Classes registered: ________

Classes Assigned: ________

(b). A copy of the Trade Mark registration certificate will be attached along with this Agreement.

(c). The Trade Mark will be assigned to the Assignee upon execution of this Agreement.

(d). Assignor irrevocably assigns, grants and transfers to the Assignee, the Assignor's world rights, titles, and interests in and to the Trade Mark, including the rights granted under any applicable laws, Trade Mark registrations and applications that may exist covering the Trade Mark, right to sue third-parties for and recover and retain all damages and other remedies for past, present, and future infringements and all other violations in law or equity concerning the Trade Mark.

(e). The Trade Mark is assigned including the goodwill of the business symbolized by the use of Trade Mark of the Assignor.

(f). All the rights vested in Trade Mark with be rights to use, sell, assign, transfer, modify, delete, or stop such or any kind of products or services in respect of the Trade Mark are completely transferred to Assignee with no reservation.

(g). The Trade Mark to be held and enjoyed by Assignee for its own use and enjoyment and the use and employment of its successors assigns or other legal representatives, as fully and entirely as the same would have been held and enjoyed by the Assignor if this assignment had not been made.

(h). Assignor hereby authorizes the concerned registrar or government official empowered to issues trademark registrations, to record this assignment, and to issue or transfer the aforementioned Trade Mark to the Assignee as the owner of all rights, titles, and interests therein, or otherwise as Assignee may direct, in accordance with the terms of this Agreement.

(i). In accordance with this Agreement, the Assignor assigns the rights of the aforementioned Trade Mark to the Assignee. After entering into this Agreement, the Trade Mark will be for the exclusive use of the Assignee. The Assignor will be barred from using the Trade Mark for its own purpose or issuing new Licenses to any third parties after entering into this Agreement.

4. CONSIDERATION

(a). The Assignee shall pay to the Assignor a one-time flat payment of Rs ________ (________). The payment shall be made using Netbanking .

(b). The one-time flat payment should be paid upfront at the time of entering into this Agreement.

(c). Any payments by the Assignee that are not paid on or before the date such payments are due under this Agreement, the Assignee shall be liable to the following penalty: ________ % per annum from the unpaid sum.

(d). Payment of such interest by Assignee will not limit, in any way, the Assignor's right to exercise any other remedies as a consequence of delay in payment.

(e). The cost of registration, notarization and stamp duty will be borne equally by the Assignor and the Assignee.

5. GOODS AND SERVICES TAX

(a). Unless otherwise explicitly agreed to by each of the Parties, the amount payable under this Agreement excludes GST.

(b). The Assignee must pay the GST Amount to the Assignor at the same time of making the payment.

(c). Any obligation on the Assignee to pay the GST Amount under this clause is conditional on the Assignor providing to the Assignee a valid tax invoice in accordance with GST law.

6. ASSIGNOR WARRANTIES

(a). The Assignor hereby provides the following warranties ( "Assignor Warranties" ):

(I). That the Assignor has the full legal authority and capacity to enter this Agreement.

(II). That the Assignor owns or controls the Trade Mark which the Assignor is issuing under this Agreement.

(III). That the Assignor has the full legal authority to provide the Trade Mark to the Assignee.

(IV). That there are no restrictions, legal or otherwise, which prevent the Assignor from entering this Agreement.

(V). The Assignor agrees to completely cease the use of the Trade Mark or any confusingly similar Trade Mark and agrees not to challenge the Assignee's right to the Trade Mark.

(VI). That the Assignor from the date of assignment as mentioned under this Agreement shall not claim any right or interest in the assigned Trade Mark.

(VII). That this Agreement and Trade Mark is not in violation of any Agreements or infringe the intellectual property rights of any third party.

(VIII). There are no legal claims or actions, existing or threatened, and no other liabilities that may negatively affect the Assignee's ability to use the Trade Mark.

(IX). In case there are any violations of the aforementioned warrants by the Assignor, the Assignor shall:

7. ASSIGNEE WARRANTIES

(a). The Assignee hereby provides the following warranties ( "Assignee Warranties" ):

(I). That the Assignee has the full legal authority and capacity to enter into and fully perform this Agreement with Assignor.

(II). That the Assignee will only use the Trade Mark in accordance with the terms of this Agreement.

8. 588528525885588

( ________ ). 5585 25522 (52225525 22 58 252 "Indemnifying Party" ) 85588 825222822 525 525228 22 522225 525 22 2222 252 22525 25522 (52225525 22 58 252 "Indemnified Party" ) 82522282825 525 55528288 2522 525 5258282 588 828828 82855525/85222525 82 252 52522282825 25522, 5588822 2522, 25 82855525 82 8222282822 8825 25 52852822 22, 522 25855-25522 885828 8825 5282282 22 252 228828822:

( ________ ). 522 852585 22 822285222858822 2528888228;

( ________ ). 82255828, 828855822 825882 822552, 52525, 25 552522 22 25222522 (828855822 25222) 2885882225 82, 25 5882225 22 5582 8222 2885882225 82 252 5828 25 82228888228 22 252 525222822822 25522 25 522 22 828 222822228 25 522528222528828, 8522525 222882222, 8888258 25 225258882;

( ________ ). 525222822822 25522'8 2588552 22 822282 8825 522 5228885882 858 528582822 82 828828 22 252 52522282825 25522;

( ________ ). 522 582 22 8222888822 25 22888822 828855822 25555, 8888258 5225582, 25 25288 2228822282 82 25 22 252 2552 22 52 525222822822 25522 25 522 22 828 222822228 25 522528222528828, 8222588822 8825252 8828252822 522 28228 525 222582828 8222825 82 522 228252222258 852525822.

( ________ ). 552 825222828852822 582528 22 252 52522282825 25522 52525 2588 825222222 552 82522225222 22 525 82 55582822 22, 8585 582528 525 52225828 58 252 52522282825 25522 252 5582 52 858 25 82 285822 25 225258882, 828855822 252 58252 22 8222 82288288 22522525282, 528288822, 22525 822282882 528822, 2222 85885 582528 25 52225828 85588 82 52228225 25 5828288525 2525282.

( ________ ). 552 2528888228 22 2588 885582 85588 8558882 252 22528252822 525/25 252852 22 2588 825222222.

9. CONFIDENTIAL INFORMATION

(a). The Parties understand that during the course of any negotiations or discussions undertaken prior to and/or in pursuance of this Agreement, either Party may become privy and to and/or come into possession of information of proprietary nature (hereinafter referred to as "Receiving Party" ), belonging to other Party (hereinafter referred to as "Disclosing Party" ). Such proprietary information is herein referred to as "Confidential Information" and shall include information whether written, visual or oral in any other medium, including information, or data disclosed to the Receiving Party by the Disclosing Party or by a third party on behalf of the Disclosing Party and shall (i) any information having been disclosed prior to the date of this Agreement; (ii) any information relating to the Disclosing Party's business, procedures, products, training modules, processes, plans, know-how, designs, trade secrets, market opportunities, computer programs; (iii) this Agreement or any terms and conditions thereof.

(b). Confidential Information shall not include any information that (i) is or becomes publicly available without breach of the terms of this Agreement; (ii) becomes lawfully available to the Receiving Party from a third party free from any confidentiality restriction; or (iii) was previously in the possession of the Receiving Party and which was not acquired directly or indirectly from the Disclosing Party, as evidenced by written records.

(c). Receiving Party or any party to whom it transmits the Confidential Information pursuant to this Agreement may disclose the Confidential Information if it becomes legally compelled to do so under any relevant law, regulation or order of the court, provided the Disclosing Party is given prompt notice of such requirement or such order and (where possible) provided reasonable opportunity to contest it and scope of such disclosure is limited to the extent possible.

(d). The Receiving Party agrees and covenants with the Disclosing Party (i) to maintain confidentiality with respect to the Confidential Information coming into its knowledge and possession before or during the term of this Agreement; (ii) to use the same solely for the purpose as envisaged under this Agreement; (iii) to inform the Disclosing Party of any incident of breach of the Receiving Party's confidentiality obligations under this Agreement within 24 hours from the occurrence of such incident.

(e). These clauses (confidentiality obligations) shall survive the termination of this Agreement for a period of ________ .

10. FORCE MAJEURE

(a). "Force Majeure" means an event beyond the control of the Parties, which prevents a Party from complying with any of its obligations under this Agreement, including but not limited to:

(I). act of God (such as but not limited to, fires, explosions, earthquakes, drought, tidal waves and floods);

(II). war, hostiles, invasion, the act of foreign enemies, requisition or embargo;

(III). rebellion, revolution, insurrection or military power, civil war;

(IV). riot, commotions, strikes;

(V). act or threats of terrorism, and pandemic.

(b). The Parties shall not be liable for any failure to perform their respective obligations under this Agreement if such failure is caused due to a Force Majeure Event and in such case, the obligations of the relevant Party shall be suspended for so long the Force Majeure Event prevails.

(c). Upon the occurrence of a Force Majeure Event, the non-performing Party/ affected Party shall immediately inform the other Party of the same and continue to use commercially reasonable efforts to recommence performance whenever and whatever extent possible without delay.

(d). The Parties shall consult together in relation to the above matters following the occurrence of the Force Majeure Event to mitigate the losses and ensure this Agreement's smooth functioning.

11. COMMUNICATION AND NOTICES

All the notices, requests, demands and other communications under this Agreement shall be in writing and shall be deemed to have been duly given if (a) delivered by hand and receipted for by the Party to whom said notice or other communication shall have been directed, (b) mailed by certified or registered mail with postage prepaid, once acknowledged by the recipient, (c) sent by email provided under this Agreement.

For Assignor:

Address: ________

Email: ________

For Assignee:

12. MODIFICATION OF AGREEMENT

In the event any provision of this Agreement is determined to be invalid by any court or other entity of competent jurisdiction, the provision of this Agreement shall be deemed to have been amended and the Parties hereto agree to execute all documents necessary to evidence such amendment so as to eliminate or modify any such invalid provision so as to carry out the intent of this Agreement as far as possible and to render this Agreement enforceable in all respects as so modified.

13. NO WAIVER

The failure of any Party hereto to enforce any provision of this Agreement shall in no way be construed to be a waiver of such provisions or to affect the validity of this Agreement or any part thereof or the right of either Party to enforce each and every provision in accordance with its terms.

14. HEADINGS

The headings in this Agreement are included for the convenience of reference only and in no way define or delimit any of the provisions hereof or otherwise affect their construction or effect.

15. INTERPRETATION

The Parties acknowledge and agree that each Party has reviewed and negotiated the terms and provisions of this Agreement and has had the opportunity to contribute to its revision. Accordingly, the rule of construction to the effect that ambiguities are resolved against the drafting Party shall not be employed in the interpretation of this Agreement. Rather, the terms of this Agreement shall be construed fairly as to both Parties and not in favour or against either Party.

16. REMEDIES

Each Party recognises that the foregoing restrictive covenants are fair and reasonable and are required for the protection of legitimate business interests. Each Party also understands that the other Party will be irrevocably harmed if the restrictive covenants are not specifically enforced. Accordingly, Each Party agrees that the foregoing restrictive covenants may be enforced by the other Party through temporary and/or permanent injunctive relief, without prejudice to other reliefs as may exist.

17. DISPUTES

Both the Parties do hereby agree that any dispute arising out of or in relation to this agreement shall be settled in accordance with the provisions of the Arbitration and Conciliation Act, 1996 and/ or any statutory modification or re-enactment thereof for the time being in force. The single Arbitrator shall be appointed mutually by the Parties. Each Party shall pay their own costs and fees of the arbitration and the cost of the arbitrator shall be borne equally. The seat or place of the arbitration shall be as follows: Andaman and Nicobar Islands .

The Agreement shall be governed in accordance with the laws of India and the courts of Andaman and Nicobar Islands will have the exclusive jurisdiction.

18. LEGAL FEE AND COSTS

In the event of any legal action by any Party to enforce any one or more provisions of this Agreement, whether at law or in equity, the prevailing Party shall be entitled to receive from the other Party all enforcement costs including, without limitation, reasonable legal fees and costs whether incurred before, during and after the trial or other litigation including appeal.

19. SURVIVAL OF OBLIGATION

Notwithstanding any other provisions of this Agreement, at termination, expiration or completion of this Agreement, any provisions of this Agreement which would by their nature be expected to survive termination, expiration or completion shall remain in provisions which are explicitly stated to survive termination, expiration or completion shall remain in full force and effect, including but not limited to any provisions which are explicitly stated to survive termination, expiration or completion.

20. COUNTERPARTS

This Agreement may be executed in two or more counterparts, each of which shall be deemed an original, but all of which together constitute one and the same instrument.

21. ENTIRE AGREEMENT

Both the Parties represent and agree that they have read this Agreement, understand its terms and the fact that it releases all claims each might have entered into this Agreement without duress or coercion from any source. This Agreement supersedes all other Agreements entered into between the Parties.

IN WITNESS WHEREOF , the Parties hereto have executed this agreement on ________ .

FOR ASSIGNOR:

Authorized Signatory: ________ ( ________ )

FOR ASSIGNEE

Govt. ID Name & No.:

The undersigned, being a duly appointed Notary Public, located at ________ on this date, the above-named ________ (Assignor) and ________ (Assignee), appeared before me and properly identified to me and did sign the forgoing.

IN TESTIMONY WHEREOF I subscribe my name and affix my seal notarial on this ___ day of ________ 20___

_______________________

Notary Public

(Details of Trade Mark)

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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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FREE 7+ Sample Trademark Assignment Forms in PDF
Trade Mark Assignment Agreement
15+ Assignment Agreement Templates

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Trademark assignments: Transferring ownership or changing your name
Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.
Free Trademark Assignment Agreement Template
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: Federally Registered. Common Law or Unregistered.
PDF TRADEMARK ASSIGNMENT AGREEMENT
This Agreement may be amended or modified only by a written agreement signed by both of the parties. Neither party will be charged with any waiver of any provision of this Agreement, unless such waiver is evidenced by a writing signed by the party and any such waiver will be limited to the terms of such writing. 9. Severability.
PDF Assignment of Trademark
Trademark by the Assignor, and the goodwill of the business relations to the Trademark and to the wares or services associated with it, to hold unto the Assignee absolutely. ... Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in ...
Free Trademark Assignment Agreement Template for Microsoft Word
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: (the "Assignor") AND. (the "Assignee") WHEREAS, the Assignor is the sole and rightful owner of certain trademarks and ...
Trademark Assignment
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.
Trademark assignment—How-to guide
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.
Transferring ownership/ Assignments FAQs
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382. Show all FAQs. Browse FAQs.
Free Trademark Assignment Template
In order to record this assignment with the United States Patent and Trademark Office, within hours of the effective date of this assignment, the parties shall sign the form of trademark assignment agreement attached as Exhibit B. The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the ...
Trademark Assignment Agreement Form
Updated Oct 25, 2023. ~ 10 pages. PDF. 27.2K downloads. A trademark assignment agreement provides a record of ownership and function similar to a digital version of a bill of sale. By using a trademark assignment agreement, you can transfer the property rights in a mark or multiple marks.
Trademark Assignment Agreement Template
A trademark assignment agreement is a legal document that outlines the terms of an exchange between two parties. This document contains information about the trademark being transferred and other important details, such as payment terms and transfer timelines. Sometimes, a trademark assignment agreement may also include provisions related to ...
Trademark Assignment: How to Transfer Trademark Ownership
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.
Free Trademark Assignment Agreement
A trademark assignment agreement is between an assignor (seller) that transfers ownership of a trademark to an assignee (buyer). A trademark or service mark is a selection of words, phrases, designs, or symbols that identifies goods or services. It's common for an assignment to be created after the sale of a business.
Trademark Assignment Agreement: All You Need to Know
A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the ...
Free Trademark Assignment Form (US)
A Trademark Assignment is a document that transfers the ownership of a trademark from one party to another. It moves the rights and interest of the trademark from the owner to the recipient. A Trademark Assignment is also known as a: Trademark assignment agreement. Trademark transfer agreement. Assignment of trademark.
Trademark Assignment
The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement.
Step-by-Step Guide to Drafting a Trademark Assignment Agreement
Drafting a trademark assignment agreement is an important part of protecting your business and its associated trademark rights. By clearly outlining the rights and responsibilities of both assignor and assignee, this document helps ensure that the trademark remains in your control and safe from potential infringement or competition.
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.
Trade Mark Assignment Agreement
WHEREAS Assignor is willing to assign said Trade Mark to Assignee and the Assignor has the full right, absolute power, and lawful authority to sell, assign, and convey the same in the manner herein set forth. WHEREAS Assignee hereby accepts the said rights, title, and interest in respect of the Trade Mark in accordance with the terms of this ...
Trademark Assignment Agreement
This Trademark Assignment Agreement (the Agreement ) is entered into this 21st day of December, 2006 (the Effective Date ) by and between Applied Digital Solutions, Inc., a corporation duly organized and existing under the laws of the State of Missouri and having it principal place of business at 1690 S. Congress Avenue, Suite 200, Delray Beach ...
PDF TRADEMARK ASSIGNMENT & GUIDELINES
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.
PDF A Specimen of Deed of Assignment of a Registered Trade Mark
identical with the Trade Mark hereby assigned nor use another Trade Mark nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to the goods in respect of which it is registered and in a manner as to render the use of this Trade Mark likely to be taken either as being a use
Assignment of Trademark
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.
CNIPA highlights critical aspects of trademark assignment in published
To assist parties in understanding the relevant legal provisions and examination procedures for trademark assignment and to guide them in following the principle of good faith, the CNIPA has published the Guidelines on Trademark Assignment Procedures. Given that assignees often pay high fees to acquire trademarks, it is crucial to understand ...

Free Trademark Assignment Agreement Template for Microsoft Word

Trademark Assignment Agreement

1. ASSIGNMENT.

2. WARRANTY.

3. GOVERNING LAW.

4. ENTIRE AGREEMENT.

5. SEVERABILITY.

6. ADVICE OF COUNSEL.

Assignor Acknowledgement

Assignee Acknowledgement

Related Documents

Transferring ownership/ Assignments FAQs

Transferring Ownership / Assignments

Additional information about this page

Trademark Assignment Agreement

Template Description

What Is a Trademark Assignment Agreement?

Parties of the Trademark Assignment Agreement

Importance of a Trademark Assignment Agreement

Ensuring Legal Ownership

Protecting the Assignee’s Investment

Avoiding Confusion and Disputes

Providing Licensing

Facilitating Mergers and Acquisitions

What Should be Included in a Trademark Assignment Agreement?

Introduction

Assignment of Marks

Consideration

No Early Assignment

Documentation

No Further Use of Marks

Indemnification

Successors and Assigns

No Implied Waiver

Governing Law

Counterparts/Electronic Signatures

Severability

Entire Agreement

List of Trademarks

When Is a Trademark Assignment Agreement Needed?

Common Use Cases

When Not To Use the Trademark Agreement

Legal Disclaimer

Template Benefits

Frequently Asked Questions

Trademark Assignment Agreement

Legal Obligations

Transfer Timeline

Governing Law

Severability

Additional Provisions

Useful resources

786 625 7099

Trademark Assignment: How to Transfer Trademark Ownership

What Is Trademark Assignment?

When Is the Assignment of Trademark Procedure Necessary?

Here’s How to Transfer Trademark Ownership

1. Due Diligence

2. Determine Authority to Transfer the Trademark

3. Execute Trademark Assignment Agreement

What Should Be Included in a Trademark Assignment Form?

4. Complete Ancillary Agreements

5. Notify the USPTO of Change of Ownership

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

Need Help with a Trademark Assignment Agreement?

Trademark Assignment Template Sample

Key Takeaways on How to Transfer a Trademark

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

How Do I Submit a Trademark Assignment to USPTO?

Do Patent Assignments Need to Be Recorded?

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Trademark Assignment Agreement

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