A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and/or design (the “Trademark”) from the current owner (the “Assignor”) to the future owner (the “Assignee”).
As a reference, people call this agreement by other names:
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property (IP) Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Assignment Agreement
What is a Trademark Assignment Agreement?
Although intangible, a trademark is a valuable asset because customers instantly associate certain qualities with a recognized brand. A trademark assignment agreement allows the owner to properly transfer the goodwill of a business to another party.
The term “trademark” is frequently used to refer to both a trademark and a service mark. Trademarks identify products or goods, while service marks identify services provided. Remember that registering a trade name is not the same as registering a trademark.
In addition to words, phrases, or logos, a trademark can also include a slogan, name, scent, shape of a product or container, and a distinctive combination of musical notes. For example, even a color can be a trademark if it acts purely as a symbol according to the 1995 U.S. Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc.
Trademark Assignment Sample
The sample trademark assignment agreement below details an agreement between the assignor, ‘Jennifer B Terry’, and the assignee, ‘Wendy J Proulx.’ Jennifer B Terry agrees to transfer ownership of the trademark to Wendy J Proulx and to give up any further use of the trademark.
When a Trademark Assignment Agreement is Needed
A Trademark Assignment Agreement is commonly used to document a transfer of ownership of a trademark or service mark. A transfer of ownership is often needed when a product or company is being sold or purchased by another person or organization.
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) |
The Consequences of Not Using a Trademark Assignment Agreement
Without a Trademark Assignment Agreement, there is no clear record of who currently owns the mark. Trademarks are often part of a company’s valuable assets and should therefore be treated like property.
| Assignors | Assignees |
|---|---|
Loss of Time
| Loss of Time
|
Loss of Money
| Loss of Money
|
Mental Anguish
| Mental Anguish
|
The Most Common Situations for Using a Trademark Assignment Agreement
These are some of the most 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 aquired | Acquiring company |
| Company winding down its assets | Growing company |
| Company merging with another | Company merging with another |
If you do not want to transfer complete ownership of the mark, consider a Trademark License Agreement instead. A license gives you temporary permission to use the mark in some limited way. For example, a license allows you to use the mark for a certain amount of time or for a particular use or region of the country.
What Should be Included in a Trademark Assignment Agreement?
A simple Trademark Assignment Agreement will identify the following basic elements:
- Effective Date: when the trademark is officially transferred to the new owner
- Trademark: describe the legally recognized word, phrase, symbol, and/or design, including the official trademark number if the mark has been registered with the U.S. 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 is being paid for the mark
- Warranties: the Assignor guarantees that they are the true owner and have authority to transfer the mark
- Signatures: the Assignor and Assignee must both sign the agreement
- Notary Public: the agreement should be notarized if you expect to register the trademark in a foreign country
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 mark 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 the Assignee will pay to be the new owner of the mark
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.