A trademark assignment agreement is a written document that transfers a legally recognized word, phrase, symbol, and design (the “trademark”) from the current owner (the “assignor”) to the future owner (the “assignee”).
What Is a Trademark Assignment Agreement?
A trademark assignment agreement allows the owner to properly transfer a business’s trademark to another party. Although intangible, a trademark is valuable because customers instantly associate certain qualities with a recognized brand.
The term trademark usually refers to both a trademark and a service mark [1] . Trademarks identify products or goods, while service marks identify services a company provides.
Remember that a trading name is different from a trademark. A trading name is the actual name under which you conduct your company, while a trademark is some kind of symbol that represents your business.
In addition to words, phrases, or logos, a trademark can include a slogan, scent, logo shape, or a distinctive combination of musical notes. For example, even color can be a trademark if it acts purely as a symbol, according to the 1995 US Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc. [2]
When Is a Trademark Assignment Agreement Necessary?
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 |
|---|---|
| Uses registered trademark symbol (R) or ® | Uses the trademark symbol (TM) or ™ |
| Formally registered with the USPTO | Uses the service mark symbol (SM) or ℠ |
| Enhanced rights because the public is on notice | Brand names and logos are automatically protected when a company uses the mark in the normal course of commerce |
| Mark appears in the USPTO’s Trademark Electronic Search System (TESS) |
Consequences of Not Using a Trademark Assignment Agreement
Without a trademark assignment agreement, there is no clear record of who owns the symbol. Trademarks are often part of a company’s valuable assets and should be treated like property.
Some of the consequences of not using this agreement for both assignors and assignees include the following:
| Assignors | Assignees |
|---|---|
Loss of Time
| Loss of Time
|
Loss of Money
| Loss of Money
|
Mental Anguish
| Mental Anguish
|
Common Situations for Using a Trademark Assignment Agreement
These are some common situations in which a trademark assignment agreement is important:
| Possible Assignors Current Trademark Owners | Possible Assignees Future Trademark Owners |
|---|---|
| Startup company | Larger business |
| Business being acquired | Acquiring company |
| Company winding down its assets | Growing company |
| Company merging with another | Company merging with another |
If you don’t want to transfer complete ownership of the mark, consider a trademark license agreement. A license grants the licensee temporary permission to use the trademark in a limited way. For example, a license allows you to use the trademark for a certain amount of time or a particular use or region of the country.
What to Include in a Trademark Assignment Agreement
A simple trademark assignment agreement will identify the following essential elements:
- Effective Date: when the trademark is officially transferred to the new owner
- Trademark: a description of the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the US Patent and Trademark Office (“USPTO”)
- Assignor: the current owner giving up ownership of the mark
- Assignee: the future owner giving money to obtain the mark
- Consideration: how much money the assignee is paying for the mark
- Warranties: a guarantee from the assignor that they’re the proper owner and have the authority to transfer the mark
- Signatures: the signatures of the assignor and the assignee
- Notary Public: the agreement should be notarized to maintain its validity
Ask yourself the following questions when creating a trademark assignment agreement:
- Who currently owns the trademark, and who will be the new owner
- What the trademark consists of and any associated registration numbers
- Where any future disputes will be handled (“Governing Law”)
- When the trademark is officially transferred to the new owner
- Why the assignor has the right to transfer the mark and associated goodwill
- How much will the assignee pay to be the new owner of the mark
Changing Ownership of Federally Registered Trademarks
If the trademark is federally registered, be sure to record the change of ownership with the USPTO Assignment Recordation Branch. A fee of $40 is required to record an assignment based on the USPTO Fee Schedule.
The USPTO Recordation Form Cover Sheet for Trademarks is strongly recommended when submitting your trademark. Additional questions about registering a trademark assignment with the USPTO may be answered by their Transferring Ownership/Assignments FAQs.
Trademark Assignment Agreement Sample
View our sample trademark assignment agreement below so you can get an idea of what it looks like. When you’re ready to create your own, download it in PDF or Word format.
