trademark assignment clause

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

• I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
• I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: 

• A critical piece of information was omitted from the cover sheet. 
• The document is illegible or not scannable. 
• The information on the cover sheet and the supporting document do not match. 
• The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

• 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. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

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

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

• Go to TSDR .
• Enter the application serial number or registration number.
• Select the “Status” button.
• Scroll down to the “Current Owner(s) Information” section. 
• Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

• If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
• If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
• If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

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

Additional information about this page

USPTO Trademark Assignment: Everything You Need To Know

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

Updated November 25, 2020:

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

Steps in Assigning a Trademark

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

Points To Remember

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

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

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

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

Patent and Trademark Ownership

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

Assignment Fees

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

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

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

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

Trademark Assignment: How to Transfer Trademark Ownership

Jul 12, 2022 | Miami Business Law Blog

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.

786 625 7099

Trending News

Related Practices & Jurisdictions

• Intellectual Property
• Litigation / Trial Practice
• Federal Circuit / U.S. Court of Spec. Jurisdiction

After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid , the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.

In contrast, if an assignment of a trademark is made without the mark’s accompanying goodwill, then it is considered an assignment “in gross” — and the assignment is invalid under U.S. law. Courts have analyzed whether an assignment was made in gross in a few different ways, but, as is the case with much of trademark law, protecting customers from deception and confusion is the primary motivation behind any analysis for determining the validity of an assignment.

One way courts determine if an assignment was made in gross is through the substantial similarity test. This test essentially examines whether the assignee is making a product or providing a service that is “substantially similar” to that of the assignor, such that consumers would not be deceived by the assignee’s use of the mark. This analysis includes an assessment of the quality and nature of the goods and services provided under the mark post-assignment.  Thus, even if an assignee is using the mark on the same type of goods, but the goods are of lower quality than the goods previously offered by the assignor under the mark, the assignment could be invalid. However, slight or inconsequential changes to goods and services after an assignment are not likely to invalidate the assignment, as such changes are to be expected and would not thwart consumer expectations.

Decisions on the question of substantial similarity are only marginally instructive, as the  test calls for a fact specific inquiry into what the consuming public has come to expect from the goods or services offered under a given mark. For example, courts have noted that despite similarities in services and goods, “even minor differences can be enough to threaten customer deception.” [1] Instances of products or services that were deemed not substantially similar (and thus resulted in invalid assignments) include: an assignee offering phosphate baking powder instead of alum baking powder; [2] an assignee using the mark on a pepper type beverage instead of a cola type beverage; [3] an assignee producing men’s boots as opposed to women’s boots; [4] an assignee using the mark on beer instead of whiskey; [5] and an assignee selling hi-fidelity consoles instead of audio reproduction equipment. [6]

Conversely, case law has also shown that substantial similarity can be found even when products or services do differ in some aspects, if consumers aren’t likely to be confused. For example, the following product changes did not result in a finding of an invalid assignment: an assignee offering dry cleaning detergent made with a different formula; [7] an assignee using thinner cigarette paper; [8] and an assignee selling a different breed of baby chicks. [9]

Whether goods or services are substantially similar may seem like an easy test to apply, but, as case law demonstrates, this fact-intensive analysis can yield results that look strange in the abstract. Disputes involving the validity of a trademark assignment are decided on a case-by-case basis, using the specific facts at hand to determine if consumer expectations are being met under the new use. Thus, while trademarks acquired through assignment can have significant value (and grant the assignee important rights formerly held by the assignor), assignees should be wary of changes to goods or services under an acquired mark that could be seen as deceiving the public.

[1] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[2] Independent Baking Powder Co. v. Boorman , 175 F. 448 (C.C.D.N.J.1910).

[3] Pepsico, Inc. v. Grapette Company , 416 F.2d 285 (8th Cir. 1969).

[4] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[5] Atlas Beverage Co. v. Minneapolis Brewing Co. , 113 F.2d 672 (8 Cir. 1940).

[6] H. H. Scott, Inc. v. Annapolis Electroacoustic Corp. , 195 F.Supp. 208 (D.Md.1961).

[7] Glamorene Products Corp. v. Procter & Gamble Co. , 538 F.2d 894 (C.C.P.A. 1976).

[8] Bambu Sales, Inc. v. Sultana Crackers, Inc. , 683 F. Supp. 899 (1988).

[9] Hy-Cross Hatchery, Inc v. Osborne 303 F.2d 947, 950 (C.C.P.A. 1962)

Current Legal Analysis

More from lewis roca rothgerber llp, upcoming legal education events.

Sign Up for e-NewsBulletins

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

Try our AI Legal Assistant - it's free while in beta 🚀

Genie's AI Legal Assistant can draft, risk-review and negotiate 1000s of legal documents

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

Get started

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.

Templates available (free to use)

Trademark Assignment Contract Simple

Helpful? Not as helpful as you were hoping? Message me on Linkedin

Links to get you started

‍ Our AI Legal Assistant (free while in beta) Contract Template Library Legal Clause Library

Try the world's most advanced AI Legal Assistant, today

• Professionals

Trademarks Trademarks

• Trademarks GO

Previous Results

Quick Links

• Start your Trademark Registration
• Respond to Trademark Office Action
• Trademark Monitoring

Our Solutions

Trademark Assignments

On the most fundamental level, a trademark assignment is simply the situation under which an existing trademark holder transfers the rights to the trademark to another individual/entity.  Specifically, the original trademark owner transfers, sells, or assigns his rights to the trademark to a new party and it is incumbent on the new party to register this change of ownership with the USPTO.  For those more technically inclined, according to the Trademark Federal Statutes and Rules (TFSR) , an “Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.”

Yes. You Need to Have a Trademark Assignment Agreement Drafted

Trademark assignments – the fine print.

Assignments Must be in Writing

The USPTO has adopted the broader position of government bodies and agencies to mandate records and documentation. If you are engaging in a trademark assignment agreement (as either the buyer or seller), make sure the full scope and contours of the deal are in writing.

Partial Assignments

Trademarks, like other forms of property, may, in fact, be owned by multiple people/entities at any given time.  Therefore, through the operation of law and contract, one of the co-owners may very well have the right to assign his partial and isolated ownership interest in the trademark to another.  Or, if the trademark has only one owner on record, the owner may transfer and assign a designated portion of his right to the trademark to another. This partial assignment should be documented and filed with the USPTO .

What Should I Submit to the USPTO For a Valid Trademark Assignment

Keep On Documenting

Remember, the USPTO is a Government body with cumbersome (but arguably necessary) logistical requests designed to put law and order to a colossal amount of data. The USPTO wants things nice and orderly and to maximize the likelihood of smooth and efficient trademark assignments, require the following:

TMEP 503(b) – SUPPORTING DOCUMENTS

To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted:

• (1) A copy of the document;
• (2) A copy of an extract from the document evidencing the effect on title; or
• (3) A statement signed by both the party conveying the interest  and  the party receiving the interest explaining how the conveyance affects title.

Trademark Assignment Agreement

Jump to section.

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.

Benjamin W.

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.

If you want free pricing proposals from vetted lawyers that are 60% less than typical law firms, click here to get started. By comparing multiple proposals for free, you can save the time and stress of finding a quality lawyer for your business needs.

ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.

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.

www.parachinilaw.com I represent a diverse mix in a vast array of specialties, including litigation, contracts, compliance, business and financial strategies, and emerging industries. Credit for this foundation of strength goes to those who taught me. Skilled professors and professionals fostered my powerful educational and professional background. Prior to law school, I earned dual Bachelor’s degrees in Business Administration & Accounting from Peru State College. I received a Master of Business Administration degree from Chadron State College. My ambitions did not stop there. While working full time as a Senior Accountant for the University of Missouri, Columbia, I achieved the lifelong goal of becoming a licensed Certified Public Accountant (CPA). Mizzo provided excellent opportunities and amazing experiences. Managing over $50M in government and private research funding was a gift. As a high ranking professional in the Department of Research, I was given priceless insight into the greatest scientific, journalistic, medical, and legal minds in the world. My passion for successful growth did not, and has not stopped. I graduated summa cum laude (top 3%) with a Doctorate in Law, emphasizing in urban, land use and environmental/toxic tort law from the University of Missouri, Kansas City. This success lead to invaluable experiences of serving as Hon. Brian C. Wimes' judicial clerk for the U.S. District Court for the W. D. of Missouri, as a staff editor/writer for UMKC Law Review, and as a litigation and transactional attorney with Lathrop GPM (fka Lathrop & Gage). My professional and personal network is expansive, with established relationships throughout the U.S. and overseas. Although I engage in legal practice all over the country, I maintain law licenses in Missouri, Kansas, and Nebraska. Federally, I hold licenses in the W.D. and E.D. of Missouri and the District of Nebraska. To offer extra value, efficiency, and options, I maintain a CPA license and am obtaining a real-estate brokerage license.

Courtney A.

Hello! I am a transactional attorney enthusiastic about helping entrepreneurs launch and protect their businesses. Let me know how I can support you with drafting and negotiating contracts, setting up your LLC, copyrighting creative content, or trademarking your brand. I am experienced with drafting and negotiating business contracts, including service/vendor agreements, NDAs, marketing agreements, licensing agreements, terms & conditions, terms of use, and many more! I have helped companies develop strong template agreements and strategies for contract management. My goal is to deliver a simple, stress-free client experience!

As a multilingual attorney, Rudy Cohen-Zardi holds multiple degrees from several institutions worldwide. He has gained experience in leading firms, including Eversheds Sutherland, LLP and Bank of China (NY). He is licensed to practice in New York. His practice focuses on bankruptcy, corporate, and contracts law.

I am a graduate from Wittenberg University and University of Illinois at Urbana-Champaign. I have been admitted to the Indiana bar since 2013. I have collaborated on several writing projects for the Indiana State Bar.

During my tenure as VP & Division General Counsel of PepsiCo Inc. in Chicago, I built upon my diverse career overseeing legal matters for both the domestic and international businesses of PepsiCo and The Quaker Oats Co. My extensive practice areas included M&A, contracts, competition, NDAs, regulatory compliance, consumer product & protection, environmental, patents, and advertising regulations. Throughout my professional journey, I navigated legal complexities associated with an eclectic range of products, spanning juices, sports drinks, cereals, snacks, needlepoint kits, canned goods, eyeglasses, men's suits, car seats and toys. For further information, see my LinkedIn: http://linkedin.com/in/karen-hunter-a700179

Find the best lawyer for your project

Quick, user friendly and one of the better ways I've come across to get ahold of lawyers willing to take new clients.

How It Works

Post Your Project

Get Free Bids to Compare

Hire Your Lawyer

Intellectual Property lawyers by top cities

• Austin Intellectual Property Lawyers
• Boston Intellectual Property Lawyers
• Chicago Intellectual Property Lawyers
• Dallas Intellectual Property Lawyers
• Denver Intellectual Property Lawyers
• Houston Intellectual Property Lawyers
• Los Angeles Intellectual Property Lawyers
• New York Intellectual Property Lawyers
• Phoenix Intellectual Property Lawyers
• San Diego Intellectual Property Lawyers
• Tampa Intellectual Property Lawyers

Trademark Assignment Agreement lawyers by city

• Austin Trademark Assignment Agreement Lawyers
• Boston Trademark Assignment Agreement Lawyers
• Chicago Trademark Assignment Agreement Lawyers
• Dallas Trademark Assignment Agreement Lawyers
• Denver Trademark Assignment Agreement Lawyers
• Houston Trademark Assignment Agreement Lawyers
• Los Angeles Trademark Assignment Agreement Lawyers
• New York Trademark Assignment Agreement Lawyers
• Phoenix Trademark Assignment Agreement Lawyers
• San Diego Trademark Assignment Agreement Lawyers
• Tampa Trademark Assignment Agreement Lawyers

ContractsCounsel User

PROPRIETARY INFORMATION AND INVENTIONS AGREEMENT

Location: delaware, turnaround: less than a week, service: contract review, doc type: trademark assignment agreement, page count: 3, number of bids: 1, bid range: $225, user feedback:, licensing agreement. help pitching to companies., location: georgia, turnaround: over a week, service: drafting, bid range: $1,500, want to speak to someone.

Get in touch below and we will schedule a time to connect!

Find lawyers and attorneys by city

Free Trademark Assignment Agreement Template for Microsoft Word

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

Trademark Assignment Agreement

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

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

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

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

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

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

1. ASSIGNMENT.

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

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

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

2. WARRANTY.

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

3. GOVERNING LAW.

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

4. ENTIRE AGREEMENT.

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

5. SEVERABILITY.

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

6. ADVICE OF COUNSEL.

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

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

By: ___________________________________ Date: __________________ _________________

[Notary Acknowledgement to Follow]

List of Trademark/Service Mark

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

Assignor Acknowledgement

State of _________________ ) County of _________________ )

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

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

WITNESS my hand and official seal.

________________________________________ (Notary Seal) Notary Public

________________________________________ My commission expires

Assignee Acknowledgement

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

Related Documents

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

How does it work?

1. choose this template.

Start by clicking on "Fill out the template"

2. Complete the document

Answer a few questions and your document is created automatically.

3. Save - Print

Your document is ready! You will receive it in Word and PDF formats. You will be able to modify it.

Trade Mark Assignment Agreement

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

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

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

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

The Assignment Agreement can be of two types:

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

Restrictions on assignment of Trade Mark:

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

How to use this document?

This Agreement covers the following major provisions:

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

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

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

Applicable Law?

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

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

How to modify the template?

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

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

Guides to help you

• What to do after Finishing a Contract?
• When and how to Notarize a Document?

Other names for the document:

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

Country: India

Intellectual Property and New Technologies - Other downloadable templates of legal documents

• Website Terms and Conditions
• Trademark or Copyright Infringement Cease and Desist Letter
• Copyright Assignment Agreement
• Software Development Agreement
• Website Cookies Policy
• Shipping Policy for the Website
• Intellectual Property License Agreement
• Privacy Policy for Website or Mobile Application
• Digital Marketing Agreement
• Refund Policy for Website
• SaaS Agreement
• E-Commerce Vendor Agreement
• Other downloadable templates of legal documents

The Federal Register

The daily journal of the united states government, request access.

Due to aggressive automated scraping of FederalRegister.gov and eCFR.gov, programmatic access to these sites is limited to access to our extensive developer APIs.

If you are human user receiving this message, we can add your IP address to a set of IPs that can access FederalRegister.gov & eCFR.gov; complete the CAPTCHA (bot test) below and click "Request Access". This process will be necessary for each IP address you wish to access the site from, requests are valid for approximately one quarter (three months) after which the process may need to be repeated.

An official website of the United States government.

If you want to request a wider IP range, first request access for your current IP, and then use the "Site Feedback" button found in the lower left-hand side to make the request.