What Is a Trademark Assignment Agreement?

A trademark assignment agreement is a legal document that transfers a design, symbol, phrase, and/or word from the assignor (current owner) to the assignee (future owner). On the other hand, a license grants permission to use a mark without transferring the mark's ownership rights. A trademark is a valuable, intangible asset that customers use to associate quality with a brand. A trademark assignment agreement allows a business owner to transfer the goodwill of the business to another party.

What Is the Difference Between Trademark and Service Marks?

The term "trademark" is also used to refer to service marks. Service marks will identify services provided, while trademarks identify goods or products. For example, McDonald's is a service mark, while Big Mac is a trademark because it's referring to a tangible product.

What Is a Trademark Assignment Agreement?

A trademark assignment agreement may also be referred to as:

Too much intellectual property can become a burden on a business. For example, the costs associated with administering the following operations may put a financial strain on the resources of the company:

  • Creating and marketing the final product
  • Defending against third-party claims
  • Directing capital towards maintaining registrations

Basic Elements of a Trademark Assignment Agreement

There are 10 basic elements that every trademark assignment agreement should include:

  1. A formal written document (not oral)
  2. An effective date that specifies when the transfer occurs
  3. A description of the trademark, including the trademark number if it's been registered with the U.S. Patent and Trademark Office (USPTO)
  4. Identification of the assignor
  5. Identification of the assignee
  6. How much consideration is being transferred to the assignor for the trademark
  7. Guarantee from the assignor that they are the owner and have the right and authority to transfer the mark
  8. Signatures from both the assignor and assignee
  9. Notarization of the agreement if you're expecting to register the mark in a foreign country
  10. Identification of the amount of goodwill included in the transfer

Other topics that should be considered when creating an assignment agreement include:

  • Are there any coexisting agreements that are imposable on legal successors?
  • What is the geographic scope of the assignment?
  • Are there any rights under third-party contracts?
  • Are there any security interests or licenses previously granted by the assignor that should be released or addressed?
  • Who is responsible for paying the recordation fee and recording the assignment?
  • Are indemnification provisions desired?

How Are the Trademark Assignments Recorded?

The USPTO is responsible for recording all trademark assignments. A request to record a trademark assignment may be filed online using the Electronic Trademark Assignment System (ETAS). Trademark applicants may create and submit a cover sheet for the recording of a trademark assignment. Any legal documentation supporting the assignment should also be submitted.

There is a $40 filing fee for recording the first trademark registration or assignment. All subsequent filings for the same trademark owner cost $25. Contact the assignment division of the USPTO with a written request to stop the recording of a trademark assignment. If the assignment division is able to cancel the recording, they will refund the filing fee.

If the assignment has already been recorded, it will not be possible to have it canceled. In cases where the error is due to the USPTO, the assignment division will correct it without charging an additional fee. §503.06- §503.06(d) in the trademark manual will guide trademark owners through the necessary steps to correct the assignment records. Remember, an update that's been completed with the assignment division doesn't necessarily update or change the ownership of record within the USPTO database.

Under normal circumstances, there's no need for a trademark owner to contact the USPTO regarding a request for a new certificate of registration or a change of ownership. In all other circumstances, the owner should contact the USPTO in writing about any changes in ownership so that the database may be updated. The USPTO database displays the most up-to-date ownership information. All other inquiries regarding the chain of title may be viewed in the assignment branch database.

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