Key Takeaways

  • A trademark assignment transfers ownership of a trademark to another party and must be recorded with the USPTO.
  • Assignments must include associated goodwill to remain valid.
  • The Recordation Cover Sheet and signed assignment agreement are required for proper filing.
  • There are multiple types of assignments, including full, partial, and assignments due to legal changes.
  • Errors in the assignment process can invalidate rights or cause enforcement issues.
  • USPTO trademark assignment records help provide public notice of ownership changes.

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.

Types of Trademark Assignments

There are several types of trademark assignments, each serving a specific business or legal need:

  • Complete Assignment: Transfers all rights, title, and interest in the trademark along with its goodwill.
  • Partial Assignment: Transfers ownership of the trademark only in relation to certain goods or services. This is more complex and may not be permitted in all jurisdictions.
  • Assignment Due to Business Merger or Acquisition: Occurs when one company absorbs another and takes ownership of its trademarks.
  • Assignment by Operation of Law: Automatically occurs through events like inheritance or bankruptcy proceedings.

Understanding the nature of the transfer is crucial, as incorrect assignment can result in legal complications or loss of rights.

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.

Importance of Recordation

Recording a trademark assignment with the USPTO is not just a formality—it plays a critical legal role. The recordation provides:

  • Constructive notice to the public of the assignment, helping prevent later claims of innocent infringement.
  • A clear chain of title, useful for enforcement, licensing, and sale of the trademark.
  • Legal protection in court, where recorded assignments carry more weight than unrecorded ones.

Delays or failure to record may expose both parties to risk. For instance, if a trademark is transferred but not recorded, the original owner may still appear in the USPTO database, leading to confusion or litigation.

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.

Trademark Licensing vs. Assignment

It's important to distinguish between assigning a trademark and licensing one:

  • Assignment: Transfers full ownership of the trademark, including the right to use, license, or sell it.
  • License: Grants permission to use the trademark under specific conditions while ownership remains with the licensor.

Licensing is ideal when a brand wants to expand its presence without relinquishing control. Assignments are appropriate when ownership needs to be permanently transferred.

Improperly labeling a license as an assignment (or vice versa) can lead to invalid contracts and IP disputes.

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.

Common Mistakes to Avoid

Avoid these pitfalls to ensure a smooth trademark assignment process:

  • Failing to include goodwill: This can invalidate the assignment under U.S. trademark law.
  • Not updating the USPTO database: Can create enforcement problems and affect future renewals or litigation.
  • Using the wrong form or conveyance type: Always select “assignment” rather than “other” to properly update records.
  • Neglecting state-level filing: If the trademark is also state-registered, file a parallel assignment with the state agency.
  • Omitting key details: Incomplete documents may be rejected by the USPTO.

Consulting an experienced trademark attorney can help prevent these costly errors.

Frequently Asked Questions

1. What is a trademark assignment?

A trademark assignment is the legal transfer of ownership of a registered or pending trademark from one party to another.

2. Does a trademark assignment need to include goodwill?

Yes. U.S. law requires the transfer of associated goodwill; otherwise, the assignment may be deemed invalid.

3. How do I record a trademark assignment with the USPTO?

You must submit a signed assignment agreement and a completed Recordation Form Cover Sheet to the USPTO, either online or by mail.

4. Can I assign only part of a trademark’s rights?

Yes, through a partial assignment. However, it must be specific to certain goods/services and carefully structured to avoid legal issues.

5. Is recordation required for a trademark license?

No. Unlike assignments, licenses do not transfer ownership and are not recorded with the USPTO, though they should still be documented in writing.

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