How To Transfer a Trademark

The owner of a trademark can agree to transfer a trademark in a trademark assignment agreement that is written and signed.

New owners of trademarks that are registered at the United States Patent and Trademark Office (USPTO) must file a copy of the trademark assignment agreement along with a fee for the recording of the assignment of the ownership of the mark.

For registered trademarks, the process of trademark assignments is:

1. Signing the Trademark Assignment Agreement
2. Recording the assignment at the USPTO with a copy of the executed transfer agreement.  The USPTO’s records must be updated because the owner must match the records.  Trademark infringement lawsuits must be filed in the name of the current owner of the trademark.

 

Trademarks that can be Assigned

Registered trademarks can be assigned.  Trademark assignment agreements traditionally include the registration number of a registered mark.

An unregistered trademark, also called a common law trademark, can be assigned.  Since trademark assignment agreements need to discuss the goodwill of the mark, the goods or services the trademark or service mark represents, the unregistered trademark can be assigned in the same or in a similar trademark assignment agreement.  A trademark assignment agreement that references an unregistered trademark can discuss the trademark application number and in what stage of the registration process the mark is in should a trademark application be filed.  The assignor should mention the relevant deadlines of the transferred trademark filings to the assignee, but it need not be in the agreement.

 

What are the types of Trademark Assignments?

The following are the types of Trademark Assignments:

1. Complete Assignment

In a complete assignment, the entire ownership of a trademark is transferred from the original owner to the new owner. This means that the new owner becomes the sole owner of the trademark, and the original owner no longer has any rights or control over it. This is the most common assignment.

2. Partial Assignment

In a partial assignment, ownership of a trademark is transferred for some goods or services, but not for all. For example, if a company sells a product under a trademark, it may choose to assign the trademark to another company for that specific product, but retain ownership of the trademark for other products. If the assignor restricts the assignee from using the assigned trademark with the condition that the assignee may not use the assigned trademark regarding goods and services that the assignee already uses, then those conditions of the transfer must be explicit.

3. Assignment with goodwill

In an assignment with part of the goodwill of the business, the trademark is transferred along with the business or part of the business in which it is used. The goodwill associated with the trademark is also transferred, which means that the new owner can use the trademark to promote the business and benefit from its reputation.

4. Assignment without goodwill

In an assignment without goodwill, the trademark is transferred without any associated business or goodwill. This is common in situations where a trademark is sold separately from the business in which it is used or when the trademark is no longer needed by the original owner.  Assignments without goodwill, however, are subject to being naked assignments, which are not valid.  This is why part of the goodwill of the business is a part of the assignment.

 

Parts of a Trademark Assignment Agreement

A trademark assignment agreement is written to be readable and it typically has paragraphs that look like the following:

 

This Assignment is made effective as of the ___ day of _____________, 2020 between  [OWNER OF THE TRADEMARK] a [STATE] [ENTITY TYPE] at [ADDRESS HERE] (hereinafter referred to as “Assignor”) and [RECEIVER], a [STATE] [ENTITY TYPE] with an address of [ADDRESS HERE] (“Assignee”).

 

This first paragraph is straightforward.  It lists the original owner of the trademark registration, the contact information of the owner, and what the entity type is (individual or a business entity such as a company, corporation, non-profit), and then the new trademark owner and its contact information.  The effective date of the assignment

 

WHEREAS, Assignor, is the sole and exclusive owner of the trademarks and service marks set forth on Schedule A, attached hereto and made a part hereof, including the goodwill specifically associated with such trademarks (the “Trademarks”), and

 

The second paragraph is also straightforward.  It lists that the owner of the trademark is making the transfer of ownership to the new owner.  This is the key language – underlying goodwill – because it means that it is not just the trademark that is being assigned.  If just the mark were being assigned, it would be considered a naked assignment, and invalid under trademark law.  Some aspect of the relationship to goods or services or a business must be made in the assignment.

While registration records will not be mentioned in the assignment agreement, the new owner can ask the USPTO for a copy of the records, or download them from the USPTO’s website.

This does not give the list of trademarks that are being assigned, however.  That is then placed into a separate schedule that is referred to in the main document.

 

WHEREAS, the parties entered into a Bill of Sale and Assignment Agreement on ______________ , pursuant to which Assignor agreed to assign to Assignee certain of Assignor’s intellectual property assets, including but not limited to the Trademarks.

 

The third paragraph seems a little opaque, however, it is important that the assignment relates to the sale of the trademark.

 

NOW, THEREFORE, for the sum of X dollars, and for other good and valuable consideration, the receipt and sufficiency of which are hereby freely acknowledged, Assignor does hereby assign, grant and convey to Assignee and its successors and assigns:

 

The fourth paragraph discusses the valuation of the assignment (which is not just monetary), and the fact that the parties freely entered into the agreement.

 

1.       All right, title and interest in and to the Trademarks, together with the goodwill of the business associated with the use of and symbolized by the Trademarks, and any and all applications (including both use and intent-to-use applications) and issued registrations with respect to the same, and the right to sue for past infringements and unauthorized uses of the Trademarks.

 

The fifth paragraph discusses all of the different forms of the trademark so that all the exclusive rights of the trademark are assigned.  By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights.  However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark.

 

2.       All right, title, and interest in and to any other trademarks and service marks utilized in connection with products and/or services manufactured, marketed, distributed and/or sold by and/or on behalf of Assignor, if any, whether or not registered, together with the goodwill of the business associated with the use of and symbolized by such marks and names, any associated registrations of such marks and names, and the right to sue and bring action for any and all infringements and unauthorized uses of such marks and names.

 

The sixth paragraph discusses the goodwill – that relationship between the trademarks and the goods or services the trademarks represent – and the ability to enforce those trademarks.  All these conditions make for a complete assignment of the trademark rights.  This shows that the trademark transfer agreement is for the entire trademark.

 

3.       Assignor will, upon request of Assignee, execute any other documents which may be necessary or appropriate to perfect in Assignee the rights, title and interest herein conveyed in the United States or in any other country.

 

It is typical that the Assignor agrees to help with the assignment and any paperwork needed at the USPTO.

Do you have questions about the ownership of your trademark or how to transfer a trademark?  Verna Law, P.C. can help you.  Verna Law, P.C. is an intellectual property boutique law firm.  Send us an e-mail at anthony@vernalaw.com or call us at 914-908-6757.