Free Trademark Assignment Agreement

Table of Contents

1. The Basics: What is a Trademark Assignment Agreement?
   • Trademark Assignment Agreement PDF Sample
2. When a Trademark Assignment Agreement is Needed
3. The Consequences of Not Using This Agreement
4. The Most Common Situations
5. What Should be Included in This Agreement?

1. The Basics: What is a Trademark Assignment Agreement?

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”).

Although intangible, a trademark is a valuable asset because customers instantly associate certain qualities with a recognized brand. This agreement allows the owner to properly transfer the goodwill of a business to another party.

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

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

Trademark Assignment PDF 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.

Trademark Assignment Agreement

2. When This 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)

3. The Consequences of Not Using This 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 time spent establishing that mark was not transferred	Loss of Time higher burden of proof that trademark was transferred
Loss of Money another business uses your mark without paying you	Loss of Money unable to capitalize on goodwill from valuable mark
Mental Anguish business goodwill harmed customer confusion of product	Mental Anguish unable to federally register receive a cease & desist letter

4. The Most Common Situations

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

5. What Should be Included in This Agreement?

A simple Trademark Assignment Agreement should generally have at least the following:

• 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.