A Trademark Assignment Agreement is a written document that legally transfers a legally recognized word, phrase, symbol, and 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 valuable because customers instantly associate certain qualities with a recognized brand. A trademark assignment agreement allows the owner to properly transfer a business’s goodwill 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 trading name is different from registering a trademark.
In addition to words, phrases, or logos, a trademark can include a slogan, name, scent, shape of a product or container, and 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.
When is a Trademark Assignment Agreement Needed
A Trademark Assignment Agreement is commonly used to document a trademark or service mark transfer of ownership. A transfer of ownership is often needed 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 mark. Trademarks are often part of a company’s valuable assets and should be treated like property.
| 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 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. A license gives you temporary permission 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 Should be Included 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: describe 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 is being paid for the mark
- Warranties: the Assignor guarantees that they are the proper owner and have the 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 what 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
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
The sample trademark assignment agreement below shows what a typical agreement looks like:
