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• Trademark Assignment: How to Transfer Trademark Ownership

Trademarks are valuable representations of the goodwill of your business that connects a specific product to your brand for your consumers. As your startup or business matures (or if you acquire a company) you will likely need a trademark assignment agreement. This is a type of agreement for transferring ownership that provides a variety of business benefits necessary for protecting purchased or transferred trademark rights.

Table of Contents

What Is Trademark Assignment?

A trademark assignment is the formal process for transferring the ownership of a trademark and the associated rights that ownership provides (e.g., use, licensure, further assignment, etc.). Often, a trademark assignment is part of a larger transaction such as an asset purchase agreement or a corporate reorganization.

When Is the Assignment of Trademark Procedure Necessary?

You will need an assignment of trademark any time you are transferring trademarks permanently. Such transfers can be within a larger corporate structure (e.g., from a parent company to a subsidiary), to a family member (e.g., via an estate administration), or to an outside party via sale.

For situations that don’t involve the owner of the trademark transferring to a new owner, you may consider a trademark licensing agreement. Unlike a trademark assignment, a license does not transfer ownership, and instead, gives the rights commonly associated with ownership. For example, you typically see trademark licensing in the context of franchise agreements, merchandising, endorsement deals, etc.

Here’s How to Transfer Trademark Ownership

The process for transferring a trademark via assignment may vary depending on the context of your situation. Relevant to determining the process will be the nature of the transaction along with the relationship between the assignee and assignor. Your checklist will also vary depending on if you are the buyer or seller of the trademark. That said, you will generally consider the following steps for a complete assignment:

• Due diligence
• Determine authority to transfer the trademark
• Execute trademark assignment agreement (What should be included in a trademark assignment form)
• Complete ancillary agreements necessary to give effect to trademark transfer
• Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership

1. Due Diligence

Not all trademarks are created equally because of their rights that exist in common law and through statutory law at the state and federal levels. As a result, it’s important to research the trademark status before taking possession. Primarily, you will want to search for its registration number with applicable state and federal agencies (i.e., the USPTO). Having a registered mark improves your ability to enforce against trademark infringement and protect its value after acquisition as part of the goodwill of the business.

2. Determine Authority to Transfer the Trademark

Another integral part of transferring a trademark through an assignment is verifying that the assignor has the authority to transfer the title to the assignee. A Miami trademark lawyer from Cueto Law will be able to help you verify that authority, but you will generally check in two ways. The first will be confirming ownership reflected on trademark registration documents recorded with the USPTO. However, you will also want to confirm that ownership and authority via the business entity organizational documents.

3. Execute Trademark Assignment Agreement

After completing proper due diligence, you will need to execute a trademark assignment agreement. The purpose of the agreement is to provide evidence of the transfer and to allocate rights and obligations among the assignor and assignee.

What Should Be Included in a Trademark Assignment Form?

The contents of your trademark assignment agreement will also depend on the nature of the transaction and the relationship between the original owner and the new owner of the mark. Typically, you will see the following elements with a trademark assignment form contract:

• Names of the parties and the agreement’s effective date
• Recitals explaining the circumstance for the trademark transfer (e.g., gift, reorganization, purchase asset agreement, etc.)
• Consideration for the intellectual property transfer (e.g., value exchanged such as cash, real estate, or other personal property
• Representations and warranties surrounding past use, current owner, etc.
• Indemnity surrounding past or future claims related to the use of the trademark
• Conflict resolution provisions (e.g., mediation, arbitration, governing law, choice of venue, etc.)

4. Complete Ancillary Agreements

As mentioned above, transferring ownership of the trademark is likely part of a larger transaction such as the sale of a company. This fact usually means you will need to complete other contracts and documents for the assignment to be enforceable. To name a few, such documents might include:

• Asset purchase agreement
• USPTO forms
• Assumption of liability agreement
• Intellectual property licensing agreements
• Corporate consent resolutions

5. Notify the USPTO of Change of Ownership

Part of a complete assignment of a trademark will require finishing the USPTO application process for a name change on the trademark registration. It’s important to notify the USPTO of the change in ownership and to update contact information for future correspondence related to your trademark. Additionally, maintaining accurate information with the USPTO for your registered trademark is necessary for protecting your trademark rights against infringement, dilution, and other legal issues.

What Are the Implications if a Trademark Transfer Is Not Done Properly?

Failing to properly transfer a trademark from one party to another can lead to exposure and create unnecessary risk. Most of the consequences stem from the fact that improper trademark transfers create confusion about who actually owns the mark. If uncertainty exists about proper ownership, it can make it more difficult to enforce your trademark rights and protect against future trademark infringement or track trademark infringement statute of limitations .

When it appears multiple parties have rights to a trademark, it can also create a risk of trademark dilution (i.e., its use becomes more in the public domain, weakening its proprietary value). As a final point, trademark transfers are usually part of a broader transaction, and failing to properly execute the assignment may jeopardize the success of the whole transaction or, at the least, substantially add to the closing costs.

As detailed above, a trademark assignment form should provide all of the information surrounding the transfer (e.g., party names, effective date, value transferred, warranties, etc.). Additionally, the assignment should provide for more general contract terms related to termination rights, conflict resolution methods, indemnities, and necessary cross-references with any simultaneously entered into agreements.

Need Help with a Trademark Assignment Agreement?

If you are in the process of buying, selling, or otherwise transferring a trademark, then a trademark assignment agreement will be a key document for establishing and protecting those trademark rights. The trademark attorneys at our firm help clients draft and negotiate these agreements along with related legal advice and services such as representations in front of the USPTO.

Contact Cueto Law Group today to properly transfer ownership of a trademark.

Trademark Assignment Template Sample

Below are a PDF and Word version of a trademark consent agreement template that you can review as a trademark assignment agreement sample. As a reminder, these are just sample forms and further modification is likely necessary to meet any particular assignment needs.

Key Takeaways on How to Transfer a Trademark

When transferring a trademark, two fundamentals will be essential for increasing the chances of a smooth transition. The first is having sound documentation and contracts (i.e., an assignment agreement) in place between the assignor and assignee. The second is confirming that all applications and registrations with the USPTO accurately reflect that new proprietorship.

Can You Use an Asset Purchase Agreement in Place of a Trademark Transfer Agreement?

Depending on the complexity of the sale, you may be able to incorporate a trademark assignment into an asset purchase agreement (APA) rather than using a separate trademark transfer agreement. Generally, APAs are much more complex documents, and an assignment agreement is a better vehicle for transferring titles.

How Do I Submit a Trademark Assignment to USPTO?

The USPTO has an Electronic Trademark Assignment System (ETAS) where you can submit and record the transfer of the trademark or simply update name change in ownership (e.g., if you recently married or divorced). Alternatively, you can submit the information via mail using a Recordation Form Cover Sheet.

Do Patent Assignments Need to Be Recorded?

Yes, recording a patent assignment with the USPTO is recommended and sometimes necessary for many of the same reasons why recording a trademark assignment is worthwhile. You can record a patent assignment through a similar USPTO system as you would for a trademark, known as the Electronic Patent Assignment System.

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Trademark Assignment Agreement | Sample

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Updated October 05, 2021

A trademark assignment agreement is between an assignor (seller) that transfers ownership of a trademark to an assignee (buyer). A trademark or service mark is a selection of words, phrases, designs, or symbols that identifies goods or services. It’s common for an assignment to be created after the sale of a business.

How to Assign a Trademark

Online filings.

• Go to the Electronic Trademark Assignment System (ETAS) .
• Click “ Please click here to access ETAS forms ” on the bottom of the page.
• Click “ Start ” on the bottom left corner of the page.
• Select “ Change of Name ” and enter both parties’ details on the next screens.
• After saving, an e-mail should arrive in the next 7 days.

Paper Filings

• Send Form Recordation Cover Sheet (Form PTO-1594) and the filing fee (search code 8521 on this Fee Chart ) and make payable to “Director of the USPTO” to the following address:

Mail Stop Assignment Recordation Branch Director of the US Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

Trademark Assignment

Choose the state of residence or business for the entity who is assigning the trademark.

Trademark Assignment Agreement

State of Alabama

This Trademark Assignment Agreement ("Assignment"), made effective as of the date set forth at the end of this document, is agreed to by and between the following parties:

________ , ("Assignor"), having an address as follows:

and ________ , ("Assignee"), having an address as follows:

WHEREAS, Assignor is the owner of a mark (the "Mark") registered with the United States Patent and Trademark Office ("USPTO") with details as follows :

Registration number: ________ Registration date: ________ ;

WHEREAS, Assignee would like to acquire the rights, title, and/or interest in and to said Mark, as well as any trademarks granted for such in any foreign countries;

NOW, therefore, in consideration of the promises and covenants contained herein, as well as other good and valuable consideration (the receipt and sufficiency of which is hereby acknowledged), Assignee and Assignor do hereby agree as follows:

Article 1: ASSIGNMENT:

Assignor hereby sells, assigns, transfers, and conveys to Assignee the whole and complete right, title, and interest in and to the Mark that has been or may be granted in the United States and any foreign countries, together with the goodwill of the business symbolized by the Mark. This Assignment includes any goodwill of any business relating to products or services on which the Mark has been used and for which it is registered. The Assignment also includes any and all royalties, income, or other such fees (which may include damages or fees for infringement) due or payable to Assignor regarding the Mark.

Under the terms of this Agreement, Assignee is specifically able to bring any actions for infringement of the Mark, even if the infringement took place before the executed date of this Assignment.

Assignor agrees to completely cease use of the Mark or any confusingly-similar Mark. Assignor will not challenge Assignee's rights in the Mark.

Article 2: PAYMENT:

For the assignment, Assignee agrees to pay Assignor the following sum: $ ________ (________).

Assignor will accept the following methods of payment: Cash .

Article 3: COOPERATION:

Assignor agrees to cooperate with Assignee to the fullest extent possible in conveying the right, title and interest in and to the Mark. The cooperation referred to herein includes the prompt completion and execution of any papers necessary, including oaths, declarations, specifications or any other papers required to make good the complete conveyance of the Mark, as well as assistance in proceedings taking place before the USPTO or any foreign country.

Article 4: RECORDATION:

Assignor will be responsible for causing recordation with the USPTO, by submitting all documents necessary to transfer ownership of the Mark. Assignor authorizes Assignee to complete recordation, and the USPTO and any other government officials to record and register this Assignment.

Assignor will be responsible for paying all fees required to the USPTO for recordation.

Article 5: SUCCESSORS:

The rights and obligations under this Assignment will inure to the benefit and be binding upon any of Assignee's successors and assignees, as well as Assignor's.

Article 6: 885855828855:

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Article 7: 88 88822585:

88882225 85555228 525 5225282228 2552 88882225 88 222 5 25522 22, 25 8888 222 82 5 25522 22, 522 5888222222, 525222222 25 22525 82225582 82 82228882 8825 2588 8888222222.

Article 8: ENTIRE AGREEMENT:

This Assignment document constitutes the entire agreement between Assignor and Assignee and supersedes any prior or contemporaneous understandings, whether written or oral.

Article 9: HEADINGS:

Headings to this Assignment are for convenience only and shall not be construed to limit or otherwise affect the terms of this Assignment.

Article 10: JURISDICTION & GOVERNING LAW:

This Agreement shall be governed in all respects by the laws of the United States of America and the laws of the state of Alabama . Assignor and Assignee consent to jurisdiction under the state and federal courts within the state of Alabama .

IN WITNESS WHEREOF, the Assignor and Assignee have executed and delivered this Assignment:

Signature:___________________________

Date:_______________________________

State of Alabama NOTARIZATION:

On the following date: ___________________, before me personally appeared the Assignor of this Assignment, namely, ________ . I am a Notary Public in and for said the state of Alabama and ________ is personally known to me or proved to me on the basis of satisfactory evidence to be the person(s) whose name is subscribed to the within the assignment and acknowledged that he/she/they executed the same.

WITNESS my hand and official seal:

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Free Trademark Assignment Agreement Template for Microsoft Word

Download this free Trademark Assignment Agreement template as a Word document to outline transfers and interests in a trademark from one party to another

Trademark Assignment Agreement

This Trademark Assignment (hereinafter referred to as the “Assignment”) is made and entered into on [Insert Date Here] (the “Effective Date”) by and between the following parties:

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

WHEREAS, the Assignor is the sole and rightful owner of certain trademarks and/or service marks and the corresponding registrations and/or applications for registration (collectively referred to as the Trademarks) set forth in Exhibit A attached hereto; and

WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and interest in and to the Trademarks; and

WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.

NOW, THEREFORE, for valuable consideration, the receipt of which is acknowledged, the parties hereto agree as follows:

1. ASSIGNMENT.

The Assignor does hereby sell, assign, transfer and set over to Assignee all of its right, title, and interest in and to the Trademarks in the United States and all jurisdictions outside the United States including, without limitation, the ongoing and existing portion of the Assignor’s business associated with the Trademarks, together with the goodwill of the business connected with and symbolized by the Trademarks (including, without limitation, the right to sue and recover for any past or continuing infringements or contract breaches related to the Trademarks, the right to renew any registrations included in the Trademarks, the right to apply for trademark registrations within or outside the United States based in whole or in part upon the Trademarks, and any priority right that may arise from the Trademarks), the same to be held and enjoyed by Assignee as fully and entirely as said interest could have been held and enjoyed by Assignor had this sale, assignment, transfer and conveyance not been made.

The Assignor authorizes the United States Patent and Trademark Office and any other applicable jurisdictions outside the United States to record the transfer of the registrations and/or registration applications set forth in Exhibit A to Assignee as the recipient of Assignors entire right, title, and interest therein.

Assignor further agrees to upon the request and at the expense of Assignee: (a) cooperate with Assignee in the protection of the trademark rights and prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge and deliver all such further papers, including registration applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Trademarks and any and all applications and registrations for the Trademarks.

2. WARRANTY.

Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Trademarks, that the Trademarks have not been previously pledged, assigned, or encumbered, and that this Assignment does not infringe on the rights of any person.

3. GOVERNING LAW.

This Assignment is governed by and is to be construed in accordance with the laws of the State of [Insert State]

4. ENTIRE AGREEMENT.

This Assignment constitutes the sole agreement of the parties and supersedes all oral negotiations and prior writings with respect to the subject matter hereof.

5. SEVERABILITY.

If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then (i) such provision will be excluded from this Assignment, (ii) the balance of the Assignment will be interpreted as if such provision were so excluded and (iii) the balance of the Assignment will be enforceable in accordance with its terms.

6. ADVICE OF COUNSEL.

EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HEREOF.

IN WITNESS whereof, the Assignor and Assignee have executed this Agreement as of the Effective Date.

By: ___________________________________ Date: __________________ _________________

[Notary Acknowledgement to Follow]

List of Trademark/Service Mark

Trademark/Service mark: _________________ Registration/Application number: _________________ Dated: _________________

Assignor Acknowledgement

State of _________________ ) County of _________________ )

On ____________________ before me the undersigned Notary Public, personally appeared ____________________________ ASSIGNOR, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within the instrument and acknowledged to me that he/she executed the same in his/her authorized capacity and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

I certify under PENALTY OF PERJURY under the laws of the State of _________________ that the foregoing paragraph is true and correct.

WITNESS my hand and official seal.

________________________________________ (Notary Seal) Notary Public

________________________________________ My commission expires

Assignee Acknowledgement

On ____________________ before me the undersigned Notary Public, personally appeared ____________________________ ASSIGNEE, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within the instrument and acknowledged to me that he/she executed the same in his/her authorized capacity and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

Related Documents

Advertising agreement, arbitration agreement, barter agreement, business sale agreement.

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

• Trademark Assignment Recordation
• Trademark Transfer: Everything You Need To Know
• How Long Does a Trademark Last
• Trademark Law
• Selling Trademarks
• Trademark Checklist
• Are All Trademarks and Names Legally Protected
• Available Trademarks
• What does Trademark Mean
• Purpose of Trademark

Trademark Assignment Agreement

Jump to section.

A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the terms and conditions of the transfer.

A properly executed trademark assignment agreement can help ensure that the new owner has full legal rights to use, sell, or license the trademark while protecting the interests of the original owner. This type of agreement is commonly used in business transactions such as mergers and acquisitions, where trademarks are often valuable assets.

Essential Elements of a Trademark Assignment Agreement

A trademark assignment agreement in California must meet certain requirements to be legally binding and enforceable. Here are some of the essentials of a trademark assignment agreement in California:

The agreement must identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement must clearly state that the current owner (assignor) is transferring ownership of the trademark to the new owner (assignee). It should also state that the assignor has the legal right to transfer trademark ownership.

The agreement should specify the consideration that the assignee provides in exchange for transferring the trademark. It can be a monetary payment or other valuable consideration.

The agreement should contain representations and warranties by both the assignor and assignee, such as the assignor's ownership of the trademark and the assignee's ability to use and exploit the trademark.

The agreement should include a provision for the assignment of goodwill associated with the trademark, which refers to the intangible value of the trademark's reputation and customer loyalty.

The agreement may also include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others.

The agreement must be signed by both the assignor and assignee and should include the date of execution.

Overall, a trademark assignment agreement in California should be clear, concise, and comprehensive and accurately reflect both parties' intentions.

Importance of a Trademark Assignment Agreement

A trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. Here are some reasons why a trademark assignment agreement is important:

A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark.

A trademark is a valuable asset representing a business's goodwill and reputation. A properly executed trademark assignment agreement helps to protect the assignee's investment by ensuring that they have the legal right to use and exploit the trademark.

A trademark assignment agreement can help avoid confusion and disputes over trademark ownership. It provides a clear record of the transfer of ownership and can be used as evidence in case of any legal disputes.

A trademark assignment agreement can enable the assignee to license the trademark to others. It can be a valuable source of income for the assignee and help increase the trademark's value.

A trademark assignment agreement is often used in business transactions such as mergers and acquisitions, where trademarks are a valuable asset. It helps to ensure that the transfer of ownership is legally valid and provides a clear transaction record.

Overall, a trademark assignment agreement is an important legal document that helps to protect the interests of both the assignor and assignee. It provides a clear record of the ownership transfer and can help avoid confusion and disputes over ownership of the trademark. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Common Mistakes to Avoid in Trademark Assignment Agreement

When drafting or executing a trademark assignment agreement in California, several common mistakes should be avoided to ensure the agreement is legally valid and enforceable.

The agreement should identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement should include all parties involved in transferring the trademark, including any successors or assigns. Failing to include all parties can result in a lack of clarity over who owns the trademark.

The agreement should specify the assignee's consideration in exchange for the trademark transfer. If the consideration is not accurately described, the agreement may be challenged as unenforceable.

The agreement should include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others. Failing to address these rights can result in a lack of clarity over the assignee's legal rights to use and exploit the trademark.

The agreement must be signed by both the assignor and assignee and should include the date of execution. Failing to obtain proper signatures can result in a lack of clarity over whether the transfer of ownership is legally valid.

Trademark law can be complex and nuanced. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Overall, it is important to carefully draft and execute a trademark assignment agreement in California to ensure it is legally valid and enforceable. Avoiding these common mistakes can help to ensure that the agreement accurately reflects the intentions of both parties and protects their legal rights.

Key Terms for a Trademark Assignment Agreement

• Trademark: It is a recognizable sign, design, or expression that identifies and distinguishes the source of a product or service from those of others.
• Assignor: The assignor is the party currently owning the trademark and transferring ownership to another party through the trademark assignment agreement.
• Assignee: The assignee is the party acquiring ownership of the trademark through the trademark assignment agreement.
• Goodwill: Goodwill is the intangible value associated with a trademark built up through the use and reputation of the mark in the marketplace.
• Consideration: It refers to the compensation or value exchanged between the assignor and assignee as part of the trademark assignment agreement. This can include monetary payment, goods or services, or other forms of value.

Final Thoughts on a Trademark Assignment Agreement

In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.

When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.

Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.

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ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.

Meet some of our Trademark Assignment Agreement Lawyers

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Diana is a registered patent attorney and licensed to practice law in Florida and in federal courts in Florida and in Texas. For nearly a decade, Diana has been known as the go-to brand builder, business protector, and rights negotiator. Diana works with individual inventors, startups, and small to medium-sized closely held business entities to build, protect, and leverage a robust intellectual property portfolio comprising patents, trademarks, copyrights, trade dress, and trade secrets.

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Trademark Ownership Change

We help you transfer ownership of a trademark., what is trademark assignment.

A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner. To record an assignment or name change, the trademark owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment. A name change does not require that the filer submit proof of name change.

Anytime a trademark changes ownership, you should record an assignment agreement. For example, an assignment should be recorded if you sell your trademark, if you gift your trademark to someone else, or if your corporate structure changes such that a new entity ends up owning the trademark rights.

What are the requirements for Trademark Assignment (Ownership Transfer)?

• The government charges a fee of $40 to process a trademark assignment.
• Complete the trademark ownership transfer workflow on www.trademarkelite.com.

Trademark Assignment

$399.00 /application + govt fee.

• Experienced Attorney will record your trademark ownership transfer
• Professional Trademark Assignment for $399.00/application + govt fee

We secure your name, slogan, logo with R !

Providing 3-easy-step online trademark registration & protection services throughout the whole world..

Our customers are always right

Our experienced attorneys helped thousands of clients with custom intellectual property solutions, enabling them to be much more competitive in business than ever before..

Trademark Elite is run by highly experienced trademark counsel who provide personalized attention and outstanding client service. And they are really nice people too!

Ryan helped me trademark the name and logo for my dental practice. He clearly explained the entire process, and I'm happy to say both of my marks are registered! I will definitely be using Trademark Elite in the future.

I've used other filing services in the past, but Trademark Elite's service is worlds apart. A real attorney - not a customer service representative - guided me through the entire process, and I didn't feel like a "just a number."

Ryan has been great throughout the entire trademarking process. He is clear and responsive, and I would definitely recommend him to my friends that need trademarks or other legal help with their business.

Fantastic service! The attorney I worked with was super helpful and walked me through the whole process. Great communication and support! I plan on doing more business with this team! I highly recommend their services!

Great response time!!

They were very fast and helpful!

What an outstanding experience. I dealt with an attorney named Ryan who was friendly, responsive, and helpful. He actually made a government paperwork process easy and painless!

If there's one word to describe Trademark Elite, it would be "sensational." Sensational because when my trademark application was processed, and I need additional help, Ryan called my mobile number right away and advised me on what to do next. He is a good listener, and he's not like most lawyers who would do most of the talking and use technical terms to confuse their clients. He's very straight-forward and doesn't beat around the bush.

I was very much impressed by the professional shrewdness and prompt actions of Ryan Bethell. Frankly, he is a direct, no-nonsense trademark specialist that I recommend to any business without any hesitation.

Excellent service from Ryan Bethell! He answered all My question and resolved every issue!! I’m extremely happy with the service provided and will recommend others who need Trademarks..

Ive been trying to legally register my trademark for about a year now. I pride myself in doing things alone, but became a succubus of energy. I found TrademarkElite on the web and they seemed forthright enough. When I contacted an Attorney there she basically said to relax. They would take care of the whole deal for me. She did. I did nothing and just found out today that my registration certificate should be issued any day now. I appreciate the straightforward service. Worth every penny.

TrademarkElite is highly recommended A+. Their responsiveness and competency is A+. They should be your go-to firm!

They did an amazing job. I was told by another lawyer that my trademark appeal would likely be rejected but Ryan and his team put together and excellent case and at a reasonable price. Very grateful.

I am soooo happy that I've chosen TrademarkElite to help me register my trademark! Ryan is very efficient and knowledgeable and on a personal side - he is just a great person to deal with. I can't be more happy with my choice - thank you Ryan! I would recommend TrademarkElite to anyone - excellent job!

Ryan is a true professional and does what he says he is going to do. That is the essence of business and he understands this. We accomplished our goals in a timely and effective manner.

Very Good and Fast Service. Very very competent...I Highly Recommend Trademark Elite.

We are super happy with our experience. The people knew what they were doing and gave you a great feeling of confidence that you were in the right spot. Liked them so much, we are now repeat customers.

Thank you for everything you've done in assisting me with getting my company's name/logo and tagline trademarked. I'm official! :)

I dealt with Ryan and he was very competent and helpful. He always replied to my questions and gave good advice. I recommend Ryan at Trademark Elite.

Trademark Assignment/Ownership Transfer FAQs

Have questions? Call 1-833-863-5483 or Contact Us for support.

What is a trademark assignment?

A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner.

When do I need to file a trademark assignment?

Do i need to record an assignment if i sell my company.

Sometimes. If a company is the owner of the trademark and the company is sold, the rights provided by a Trademark Registration pass with company to a new owner by default.

If you are intending to sell a company and retain the trademark rights, either under your own name or a new company, then you should record a Trademark Assignment before the company is sold.

How much does a Trademark Assignment cost?

The government charges a fee of $100 - $200 to process a trademark assignment. If you use an attorney to file, the professional fees to prepare and file your statement of use will vary significantly based on the attorney's hourly rate.

We charge a fee of $399 per application for preparing and filing each Trademark Assignment.

Register your name, slogan, or logo trademark today.

The world #1 free trademark search & tracking, easy-to-use web based platform. our experienced attorneys and specialists can provide you with the best custom-made solutions no matter whether you're an individual, small business, or large enterprise. start online trademark search for free. register a trademark by elite attorney $299/class + govt fee..

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Trademark Center beta is here

Trademark Center beta

We launched Trademark Center beta, a new system designed to improve your filing experience. You can use the beta version of Trademark Center to apply to register your trademark. You have the option to apply to register your trademark in either Trademark Center beta or the Trademark Electronic Application System (TEAS) until early January 2025. The cost to file remains the same in both systems.  

For more information, visit our Trademark Center page .

Index of all TEAS forms

See below for a listing of all forms within a specific category. To access a form, select the form name.

To look at the forms prior to accessing the electronic version in the list below, see the form previews . Do not attempt to file the PDF version. It is for informational purposes only and not for submitting the form. 

Log in to access forms

To access TEAS and TEASi forms, select a form listed below. If you are not already signed into MyUSPTO using your USPTO.gov account, then you will be prompted to log in with two-step authentication.

For the latest information or to create a USPTO.gov account, review the Log in to TEAS and TEASi page .

Initial Application Form

• TEAS Plus/TEAS Standard Application
• Trademark/Servicemark Application, Supplemental Registe r
• Certification Mark Application, Principal Register
• Collective Membership Mark Application, Principal Register
• Collective Trademark/Servicemark Application, Principal Register

Response Forms

• Response to Office Action Form
• Request for Reconsideration after Final Office Action Form
• Response to Suspension Inquiry or Letter of Suspension
• Request for Extension of Time to file a Response (Trademark Application)
• Response to Intent-to-Use (ITU) Office action
• Response to Post-Registration Office action
• Response to Petition to Revive Deficiency Letter
• Response to Petition to Director Inquiry Letter

Intent-to-Use (ITU) Forms

• Statement of Use/Amendment to Allege Use for Intent-to-Use Application
• Request for Extension of Time to File a Statement of Use
• Respond to an Intent-to-Use Unit Office action

Extension Request Forms

• Request for Extension of Time to File a Response (Trademark Application or Expungement or Reexamination Proceeding)

Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Forms

• Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form
• Request to Delete Section 1(b) Basis, Intent-to-Use

Correspondence and Attorney/Domestic Representative Forms

• Change Address or Representation (CAR) Form
• Withdrawal of Attorney

Petition Forms

• Petition to Revive Abandoned Application - Failure to Respond Timely to Office Action
• Petition to Revive Abandoned Application - Failure to File Timely Statement of Use or Extension Request
• Petition to Director
• Petition to make Special
• Request to Restore Filing Date
• Request to Make Special
• Request for Reinstatement
• Petition to Change the Filing Basis After Publication
• Letter of Protest
• Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services after NOA
• Petition to Director to Review Denial of Certification of International Application
• Petition to Director for an International Application/Registration

Expungement or Reexamination Forms

• Petition for Expungement or Reexamination
• Response to a Post-Registration office action
• Request for Extension of Time to File a Response (Expungement or Reexamination Proceeding)  

Miscellaneous Forms

• Voluntary Amendment Not in Response to USPTO Office Action/Letter
• Request for Express Abandonment (Withdrawal) of Application
• Request to Divide Application
• Order Trademark Presentation Copy of Registration Certificate  

Registration Maintenance/Renewal Forms

• Combined declaration of use & incontestability under Sections 8 & 15
• Declaration of Use and/or Excusable Nonuse of a Mark under Section 8
• Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9
• Declaration of Incontestability of a Mark under Section 15
• Section 7 Request for Amendment or Correction of Registration Certificate
• Surrender of Registration for cancellation
• Request to Divide Registration
• Section 12(c) Affidavit
• Declaration of Use and Excusable Nonuse under Section 71
• Combined declaration of use & incontestability under Sections 71 &15

Assignment Forms

• Assignments
• Change of name
• Other conveyances of title

You can file your assignment online through Assignment Center at https://assignmentcenter.uspto.gov .

Trademark Trial and Appeal Board Forms

• Request for Extension of Time to File an Opposition
• File a New Proceeding (Notice of Opposition; Petition for Cancellation; Appeal of Refusal to Register)
• File Documents in an Existing Board Proceeding

You can file your TTAB submissions online through the Electronic System for Trademark Trial and Appeals (ESTTA) at https://estta.uspto.gov/ .

Madrid Protocol Forms

• Application for International Registration
• Subsequent Designation
• Response to a Notice of Irregularity
• Replacement Request
• Transformation Request
• Combined Declaration of Use & Incontestability under Sections 71 & 15
• Petition to Director for an International Application/Registration

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