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 shows what a typical agreement looks like:
|TRADEMARK ASSIGNMENT AGREEMENT|
This Trademark Assignment Agreement (this “Agreement”) is entered into as of the ______ day of _______________, 20______ (the “Effective Date”) by and between:
Assignor: ________________________ (the “Assignor”), a(n) (Check one) ☐ Individual
☐ Corporation ☐ Limited Liability Company ☐ Partnership ☐ Limited Partnership ☐ Limited Liability Partnership located at ________________________________________ [Address] and
Assignee: ________________________ (the “Assignee”), a(n) (Check one) ☐ Individual
☐ Corporation ☐ Limited Liability Company ☐ Partnership ☐ Limited Partnership ☐ Limited Liability Partnership located at ________________________________________ [Address].
- Mark. The term “Mark” as used in this Agreement shall mean any registered and unregistered trademarks, service marks, logos, designs, trade names, domain names, package designs, and product designs, including but not limited to all registrations and/or registration application rights and all rights to prepare derivative marks, together with all the goodwill of the business symbolized thereby, and all other rights in the United States and in all countries and territories worldwide and under any international convention (hereinafter collectively referred to as “Mark”) identified as follows:
Mark Name: _____________________________________
Application or Registration Number: _____________________________________
State of Registration: _____________________________________
Date of Application or Registration: _____________________________________
Description of Goods/Services: _______________________________________________________
- Assignment. Assignor hereby irrevocably assigns, grants, and transfers to Assignee all rights, title, and interest in and to the Mark in perpetuity. Assignor further authorizes the United States Patent and Trademark Office and all other agencies in jurisdictions outside the United States to record the transfer of the registration. After the Effective Date, Assignor agrees to make no further use of the Mark or any confusingly similar mark in the United States and anywhere in the world, except as may be expressly authorized by the parties in writing. Assignor further agrees to not challenge Assignee’s use or ownership of the Mark.
- Consideration. Assignee shall pay Assignor the sum of $_______________, payable on ____________________, 20______ in consideration for assignment of the Mark.
- Execution and Delivery. After Assignee pays the amount due, Assignor shall execute and deliver to Assignee any and all instruments of sale, transfer, conveyance, assignment, and confirmations as Assignee may lawfully request in order to obtain, perfect, maintain, or otherwise enable the transfer, conveyance, and assignment to Assignee and to confirm Assignee’s title to the Mark and any and all related federal and state trademark registrations and/or registration application rights.
- Representations and Warranties.(Check one)
☐ Assignor represents and warrants to the Assignee that the Assignor is the legal and rightful owner
of the Mark, has good and marketable title to and full legal right and authority to sell and transfer the
same and that the Mark is free of all liens, claims, and encumbrances.
☐ Not applicable.
- Legal Fees. If either party, any heir, personal representative, successor, or assign of either party hereto enforce this Agreement through litigation, the prevailing party shall be liable for reasonable legal fees and expenses incurred by the other party in connection with such litigation, including, but not limited to, any appeals.
- Entire Agreement. This Agreement constitutes the entire agreement between Assignor and Assignee and supersedes all prior understandings of Assignor and Assignee, including any prior representation, statement, condition, or warranty.
- Modification and Waiver. This Agreement may be amended or modified only by a written agreement signed by both of the parties. Neither party will be charged with any waiver of any provision of this Agreement, unless such waiver is evidenced by a writing signed by the party and any such waiver will be limited to the terms of such writing
- Severability. If any provision of this Agreement is held to be invalid or unenforceable in whole or in part, the remaining provisions shall not be affected and shall continue to be valid and enforceable as though the invalid or unenforceable parts had not been included in this Agreement.
- Jurisdiction. This Agreement will be governed by and construed in accordance with the laws of the State of _________________, without regard to the principles of conflict of laws. Each party consents to the exclusive jurisdiction of the courts located in the State of _________________ for any legal action, suit or proceeding arising out of or in connection with this Agreement. Each party further waives any objection to the laying of venue for any such suit, action or proceeding in such courts.
- Successors and Assigns. This Agreement will inure to the benefit of and be binding on the respective successors and permitted assigns of the parties.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date first written above.
State of _________________
County of _________________
On this ______ day of _______________ in the year 20______ before me, ________________________, appeared ________________________, who is personally known to me or proved to me on the basis of satisfactory evidence) to be the person whose name is subscribed to this instrument, and acknowledged that he or she executed it.
(Signature of Notary Public)
My Commission Expires: _______________
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.
|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:
Current Trademark Owners
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.