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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
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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.
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What Is a Trademark Assignment Agreement?
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What Is a Trademark Assignment?
How to record a trademark assignment, trademark assignment agreement template.
A Trademark Assignment Agreement is a legal document that allows parties, an assignor and assignee, to record the purchase and sale of a federally registered trademark. This is the document for you if you need to buy or sell a registered trademark or service mark and if you want to remove, add, or change the name of the owner of the mark. Whether your transaction involves a trademark, logo, or service mark, this agreement will help make the transfer of ownership legitimate.
Alternate Name:
- Trademark Assignment Contract.
If you need to transfer an owner's rights, interest, and title of a trademark or service mark, you may download a Trademark Assignment Agreement template below or draft a more personalized document using our online form builder .
A "trademark assignment" means the transferring party (the assignor) transfers to the receiving party (the assignee) the property rights in a trademark or service mark. When you assign the trademark, you also convey the goodwill or business associated with it - a transfer of ownership without goodwill is invalid. A trademark or service mark is a valuable asset and prized possession because it helps the customer to quickly associate specific qualities with a recognizable brand. A proper assignment of trademark will prevent the loss of time, money, and image for both parties.
The assignment of a legally recognized symbol, word, phrase, or design must be done in writing to provide a record of ownership and transfer and protect the rights of both parties in case of a potential dispute or disagreement. To be valid, a Trademark Assignment Agreement has to include the following information:
- Identification. The names of the assignor and the assignee, their addresses, and telephone numbers.
- Trademarked Item. Description of the trademark to be assigned and any relevant registrations or applications for the mark. The assignor transfers to the assignee all the interest in the mark, including the income and royalties payable to the assignor regarding the mark and all rights to sue for the infringement or misappropriations of the mark.
- Warranty. The assignor confirms the legal ownership of all rights, title, and interest in the trademark and certifies that the trademark has not been previously assigned, encumbered, or pledged - that is, the agreement will not infringe on the rights of another individual or entity.
- Purchase Price. Any trademark has a monetary value, so the assignee must pay the assignor a consideration. Before you sell all of your rights in a trademark, make sure this is the best course of action for you and your business - that one-time payment is all that you will receive for the trademark.
- Verification. Signatures of the parties and the actual date of signing.
Both parties are highly encouraged to review the agreement carefully to ensure the inclusion of all relevant deal points - state expressly all the expectations and terms, it is better to be over-inclusive.
You may obtain a notary seal if you wish - the notarization is not strictly required, but recommended. Once the assignment is recorded, the assignee must register it with the U.S. Patent and Trademark Office, otherwise, the agreement will not be effective. You can do it online via the Electronic Trademark Assignment System or by mail - complete the Recordation Form Cover Sheet to transfer ownership and mail it to the Mail Stop Assignment Recordation Branch, Director of the US Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.
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- Non-Disclosure Agreement ;
- Copyright Infringement Notice .
Download Trademark Assignment Agreement Template
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5+ SAMPLE Trademark Assignment Agreement in PDF | MS Word
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1. complete assignment, 2. partial assignment, 3. assignment with goodwill, 4. assignment without goodwill, 1. monetization of brand, 2. easy brand building, 3. maintenance of ipr, 4. owner gets the value of the trademark, 5. acts as a valid proof, 6. expansion of business, 7. owner enjoys various benefits, 1. make an application, 2. submission of forms and documents, 3. apply to the registrar, 4. direction from the registrar, 5. advertisement, 6. transfer of ownership, share this post on your network, you may also like these articles, 72+ sample partnership agreements in pdf | ms word | excel | google docs | apple pages.
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Trademark assignments: Transferring ownership or changing your name
Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered. Here are examples of common reasons:
- I’ve sold my business and need to transfer ownership of the trademark.
- I got married just after I filed my application and my last name changed.
This transfer of ownership is called an assignment. There are fees associated with assignment changes. Locate the Trademark Services Fee Code “8521” on the current fee schedule to find the fee.
To correct minor errors, see correcting the owner name in Trademark Electronic Application System (TEAS) forms. These corrections aren’t considered assignments.
Limitations based on filing basis
For Intent-to-Use applicants, if you’re transferring ownership to a business successor for the goods or services for which your mark relates, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use before you file your assignment. See TMEP §501.01(a) .
If you're filing through the Madrid Protocol, follow the guidance using the Madrid Protocol to change name or ownership.
How to update ownership information
To transfer ownership or update your information to reflect a legal name change:
- Use Electronic Trademark Assignment System (ETAS) to request the change.
- If you're filing a TEAS form within the next week, you may need to manually update the owner information on the TEAS form. If your TEAS form doesn't reflect your requested change:
a. Check the box under the owner name to change the owner name.
b. Explain why you are change the owner name in the Miscellaneous Statement field.
c. Enter the new name in the name field.
If you're not filing a TEAS form within the next week, check the status of your assignment change to verify that your information has been updated.
You'll receive a confirmation receipt: In approximately seven days you'll receive the official Notice of Recordation/Non-Recordation. If you haven’t received this notice, please contact the Assignment Recordation Branch .
How we review: Before the document is recorded, we carefully review the information you fill out on the ETAS form for accuracy with the information in the document transferring ownership. If we find an error or discrepancy, we may contact you to correct it before we record your filing.
If you’ve made an error in the ETAS form: Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the Trademark Manual of Examining Procedure (TMEP) Section 503.06 to make any corrections to the assignment.
Making assignment changes by filing on paper
Use the Recordation Form Cover Sheet to transfer ownership or change the name using a paper submission. Mail to:
Mail Stop Assignment Recordation Branch Director of the US Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450
Generally, paper filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.
Checking the status of your assignment change
After you receive your Notice of Recordation, wait one week to check the Trademark Status and Document Retrieval (TSDR) to verify the owner information has been updated. Follow these instructions to check TSDR:
1. Go to TSDR . 2. Enter the serial number or registration number. 3. Select the Status button. 4. Scroll down to the current Owner(s) Information. 5. Check to see that owner information is updated correctly. If the owner information hasn’t yet updated, go to the Prosecution History to see the status. It may take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry says "Ownership records not automatically updated," notify us in writing so that the records can be manually updated. The form you use depends on the status of your application:
- If your trademark has not published in the Trademark Official Gazette, use the TEAS Voluntary Amendment form .
- If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form .
- If your trademark has registered , use the TEAS Section 7 Request form .
Updating your correspondence information
Even if your ownership information is automatically updated in the Trademark Status and Document Retrieval (TSDR) system, you must ensure that your correspondence information including any attorney information is also updated. To update your correspondence or any necessary attorney information, please file your request through the TEAS Change of Address or Representation (CAR) form .
TMIN News Video 15: Assignments and Ownership Changes
Watch this video to learn about the most common types of ownership changes and how to properly notify us of each type.
TMIN News 15: Assignments and ownership changes
Other viewing options:, other resources:.
More news broadcast-style videos about the federal trademark application process are available on the Trademark Information Network (TMIN) series webpage .
For further information see TMEP §500 and look at the frequently asked questions .
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Trademark Assignment
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A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.
Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.
This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.
This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.
This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.
How to use this document
This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.
This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.
Once the form is complete, the parties can undertake the following steps:
1) Sign and execute the form in front of a notary (both parties)
2) Have the notarization completed
3) Record the Trademark Assignment with the United States Patent and Trademark Office
Applicable law
Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).
How to modify the template:
You fill out a form. The document is created before your eyes as you respond to the questions.
At the end, you receive it in Word and PDF formats. You can modify it and reuse it.
A guide to help you: How to Register A Trademark
Other names for the document: Agreement to Assign Brand, Assignment for Trademark, Brand Assignment, Intellectual Property Assignment Agreement, Logo Assignment
Country: United States
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Trademark assignment — How to guide by LegalZoom Staff
Trademark assignment — How to guide
What would you like to protect?
by LegalZoom Staff updated February 08, 2023 · 10 min read
1. Overview
A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including trademarks or software) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly-drafted trademark assignment can help in both circumstances.
A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.
If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations and you will be well on your way to establishing a clear record of title for all of your trademarks.
2. Dos & don’ts checklist
- A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like “Coca-Cola” and images like Nike’s famous “swoosh.” A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.
- An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). A transfer of partial rights is not a trademark assignment: do not revise the agreement to limit the reach of the rights being provided.
- A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made.
- The advantage of selling your trademark outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property: you will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a trademark, make sure that this is the best (and most lucrative) approach for you and your company.
- Do not enter into an agreement without completing your due diligence. If you are purchasing a trademark, conduct searches with the USPTO, all 50 states, DBA filings, other government agencies, and online directories to make sure the seller actually has complete and unique rights in the offered property. Although your findings will not guarantee title, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the valuation and breadth of the mark. Consider hiring a professional to help in your investigation: comparing trademarks often requires a specialized understanding of what marks will be considered confusingly similar or deceptive.
- If you are selling a trademark, make sure you own it. Although this may seem obvious, ownership of intellectual property is rarely clear cut. For example, you may have a name that you think of as your trademark, but unless you have used it in business you do not have rights in that mark. Even if you have been using a mark in your business, another company may have started using it before you and have priority rights in that mark. A thorough search of the relevant marketplace and registry office should be conducted before you attempt to sell your trademark.
- Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly on the document.
- Sign two copies of the assignment, one for you and one for the other party.
- It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
- If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs.
3. Trademark assignment instructions
The following provision-by-provision instructions will help you understand the terms of your assignment. The numbers and letters below (e.g., Section 1, Section 2, etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process.
- Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest, and the Assignee is the party receiving it.
- Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the trademark.
- Section 1: Assignment of marks. The assignment and acceptance of the assignment of the trademarks and service marks. Note that the marks being assigned are not described in the agreement itself. The assignment references “Schedule 1,” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred. Note too the emphasis placed on the goodwill being sold with the property. Goodwill can be defined as the intangible value of a piece of property (e.g., a brand’s reputation and recognizability). Remember that this is an essential element of a trademark transfer: assignments attempted without goodwill are considered invalid.
- Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
- 3(a): it is the owner
- 3(b): it has not sold or transferred the marks to any third party.
- 3(c): it has the authority to enter the agreement.
- 3(d): it does not believe that the marks have been taken from any third party without authorization (e.g., a knowing copy of another company’s trademark).
- 3(e): it does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
- 3(f): the marks weren’t created while the creator was employed by a third party. In many cases, if an individual was employed by a company and came up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the marks being sold. If you and the other party want to include additional representations and warranties, you can do so here.
- 4(a): has the authority to enter the agreement.
- 4(b) has enough funds to pay for the assignment.
- If you and the other party want to include additional representations and warranties, you can do so here.
- Section 5: No early assignment. Prevents the Assignee from re-transferring the marks, or using them as collateral for loans, until it has made complete payment of the money due under the agreement.
- Section 6: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
- Section 7: No further use of marks. Indicates that after the effective date of the agreement, the Assignor will stop using all of the trademarks being transferred and will not challenge the Assignee’s use of those marks.
- Section 8: Indemnification. A description of each party’s future obligations, if the trademark is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
- Section 9: Successors and assigns. States that the parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
- Section 10: No implied waiver. Explains that even if one party allows the other to ignore break an obligation under the agreement, it does not mean that party waives any future rights to require the other to fulfill those (or any other) obligations.
- Section 11: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write in a mailing address for both the Assignor and the Assignee.
- Section 12: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
- Section 13: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city - much less the same room - this provision ensures that business can be transacted efficiently, without sacrificing the validity of the agreement as a whole.
- Section 14: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with choice of law would be invalidated, leaving the remainder of the assignment enforceable.
- Section 15: Entire agreement. The parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
- Section 16: Headings. Notes that the headings at the beginning of each section are meant to organize the document, and should not be considered operational parts of the note.
- Schedule 1: List of trademarks and/or service marks. In order for a trademark assignment to be effective, the marks being transferred must be clearly identified. Be thorough in your description and attach any registrations or samples that you may have. If you do include samples, reference the inclusion of those samples in the schedule (e.g., “* See attached drawing”).
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Drafting of Trademark Assignment Agreements
Trademark assignment agreement is a written contract that transfers the registered trademark ownership to another person.
Special provisions are to be added to the contract, depending on what the trademark owner provides. The legal drafting team in HHS Lawyers create effective legal contracts that don’t just meet the specific needs of businesses, but also easy for customers to understand.
Some of the reasons why businesses seek the help of our experts for the drafting of a trademark assignment agreement include:
- To monetize the value of a registered trademark and enjoy investments done for creating the brand.
- To promote business expansion and maintaining brand alive.
- To work on brand building and also benefitting the new owner of the trademark
- To act as a valid proof and legal evidence in court
Depending on the type of assignment being provided, you may want the agreement to be tailored specifically to your business’ needs and requirements. The lawyers of the firm can help clients regarding the assignment agreement and help ensure it includes all the essential provisions such as:
Assignment provisions
This section in the agreement may include the details of the mark and the person or entity to whom the rights have to be assigned. They also include the rights and duties of assigner and assignee and the rights of ownership that are broadened.
Disclosure provisions
This section includes the provisions that should be disclosed and developed as per the assignment provisions. This may also include the provisions on consequences of disclosing the confidential information that come with the trademark assignment.
The seasoned lawyers and legal consultants of the firm have decades of experience in drafting different kinds of trademark assignment agreements including:
- Trademark license agreement
Under trademark license agreements, the Licensor of a registered trademark gives authorization to the licensee to manufacture and distribute products under the registered trademark
- Trademark coexistence agreement
The co-existence agreement is agreed between two parties to use a similar trademark for marketing purposes without interfering in each other’s work or business operations
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Our legal drafting team helps clients create contracts that comply with local regulations and achieve what they are set to achieve when it comes to the assignment of a mark. Below are the key elements that should be mentioned in a trademark assignment agreement.
An effective date
When the trademark is officially transferred to the new owner
A description of the trademark
This may include legally recognized phrase, symbol and or the design including official trademark registration number that has been registered.
Identification of the assignor
Mentions the name of the current owner of the mark.
Identification of the assignee
Under this section, the name of the future owner of the mark is mentioned
Consideration
It is the amount of money that has to be transferred, if applicable, for the mark assignment.
The guarantee from the assignor to have the right to transfer the mark.
The signatures of both the parties in the contract.
Notary public
If a mark was registered in any foreign country, then it has to be notarized.
The experienced lawyers and legal consultants at HHS Lawyers fully understand the legal systems related to trademarks and are skilled at handling any type of legal drafting or legal documentation in UAE and Dubai. Our experts can provide you with the knowledge and skill you need in completing a mark assignment transaction.
The work should be completed within a limited time without any errors, as you may know very well. The expertise of our seasoned legal drafting team will not just help in putting together trademark assignment in a most effective format but also will the trademark owner to preserve the goodwill and the brand associated with the mark in UAE. Book your initial consultation now!
Read more Enquire Now
What are the different types of trademarks that can be assigned with Trademark Assignment Agreements in UAE?
The assignor and assignee have to transfer trademarks and service marks through an agreement. The service mark or trademark can be registered or unregistered.
Explain the term warranty?
This term is for assurance which is made between one party and another to seek protection when every aspect of the assignment does not go as planned.
What is a trademark that is in the Madrid system?
The Madrid system facilitates the trademark registration in several different jurisdictions across the globe. This means the trademark is unique and enforceable in several different locations worldwide. If you want to know more about this, don’t hesitate to contact our trademark specialists.
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Learning / IPR / Trademark Assignment; Know the Complete Procedure
Trademark Assignment; Know the Complete Procedure
Trademark is intellectual property, just like a physical property like land. As an owner of land has the right to sell or transfer his/her property, trademark owner can also do the same to his IP. Every brand or trademark owner can transfer his right with respect to his trademark, either by the way of licensing or trademark assignment. The Trade Mark Act, 1999 [1] , deals with the licensing of trademark and trademark assignment.
Trademark assignment is the part of transfer of ownership of trademark to one party to another. In this article, we will discuss the procedure of trademark assignment and other important aspects of trademark assignment.
Page Contents
What is a Trademark Assignment?
The process when right and ownership of the trademark are transferred to any other person is called trademark assignment. Partial assignment of trademark is generally known as licensing.
Further, the assignment of trademark usually takes place through execution of the agreement between the parties, which is known as Trademark Assignment Agreement. Assignment agreement will be considered as legally valid when it shows intention the part of the assignor to transfer complete or partial ownership of the mark.
What are the kinds of Trademark Assignment?
- Complete Assignment;
In such assignment, complete rights in relation to a registered trademark are transferred to the second party. The owner here transfers all the rights with respect to marking to the other party, which includes rights of further transfer, to earn royalties, etc.
For example, A, the proprietor of a brand, sells his mark completely through an agreement to B. Now, A does not retain any rights with respect to the brand.
- Partial Assignment;
In case of partial assignment, transfer of ownership is limited to certain services/products as parties have decided or expressed in trademark assignment agreement.
For example; X, the proprietor of a brand used for jams and jellies and dairy products. X assigns the rights in the brand with respect to only dairy products to R and retains the rights in the brand with respect to jams and jellies.
Further, a complete and partial assignment can be made with goodwill or without goodwill.
- Assignment with goodwill;
Such assignments are made when value and right, both the things associated with the trademark are transferred to the third entity with goodwill.
For Example, R, the proprietor of a brand “Shudh” relating to shoe products, sells his brand to S such that S will be able to use the brand “Shudh” with respect to dairy products as well as any other products it manufactures.
- Assignment without goodwill;
Assignment without goodwill is also known as gross assignment. Here, the owner of the brand restricts the right of the buyer. The buyer cannot use such a brand for the product being used by the original owner. Hence, the goodwill attached to such a brand with respect to the product already being sold under such a brand is not transferred to the buyer.
For Example; P, the proprietor of a brand “Shudh” relating to dairy products, sells his brand to Q such that Q will not be able to use the mark “Shudh” with respect to dairy products but can use this brand for any other products being manufactured by it. In such case, the goodwill which is associated with brand “Shudh” for dairy products is not transferred to Q, and Q will be required to create distinct goodwill of brand “Shudh” for any other product or service like Restaurant wherein Q proposes to use this brand.
Few Restrictions as per Trade Mark Act, 1999
- Restriction over such assignment, which results in the creation of exclusive rights in more than one person with respect to same goods and services, or for same depiction of goods and services or such goods and services are associated with each other.
- Restriction over such assignment which results in different people using the mark in different parts of the country
- Restriction on assignment that results in different people using the trademark in different parts of the country together.
What is Trademark Licensing?
The concept of Trademark Licensing allows the other to use the mark without assigning the ownership. Also, the same can be done for all or few goods and services covered. Trademark Act does not talk about the term ‘License,’ whereas the term used in the act is ‘registered user.’
Trademark assignment is beneficial for both the parties. While the licensor relishes the right to the mark by getting royalties, and the licensee becomes competent to expand its market operations by using the brand and developing its name.
What are the benefits of Assignments of Trademark?
- Get Your Trademark’s value ;
The creation of brand is processed in which a lot of money, time, and hard work are required. By assignment of trademark to other entities, owners can encash the value of the brand, which was till now only in papers.
- Assignment Agreement is the valid proof;
In case if any dispute with respect to trademark arose, the legal rights of assignee can be established easily through trademark assignment agreement. Registry assures that all the checks are in place, and the validity of the entire clause mentioned in the agreement is published in trademark journals.
- Pre- Established Brand;
The assignee has the benefit of dealing in an already existing and established brand name. The time, efforts, and investment for making brand value are saved for the assignee.
Read our article : Grounds for the Refusal of the Trademark Registration
What are the documents required for the Trademark Assignments?
What is necessary to effect the valid Assignment Agreement?
- Must be in writing ;
- Identifying the parties as assignor and assignee;
- Identification of the trademark to be assigned along with the relevant application and registrations;
- Be given for consideration ;
- Identify the date of assignment;
- Duly executed agreement;
- Include the transfer of trademark in goodwill
How to Register Trademark Assignment with the Registry?
Below mentioned is the process to record the trademark assignment with the registry;
Assignment of the unregistered trademark;
According to section 39 of the Trademark act, 1999,
Assignment of the registered trademark;
According to section 38 of Trademark act, 1999
What is the procedure for Trademark Assignment Agreement?
Following is the procedure for trademark assignment;
- The first step is to form an application for the assignment of trademark. The plea can be made either by the assignee or assignor or by both. Furnish all the required details of the transfer mention under form TM-P.
- After completing the application drafting, the same is required to be submitted with the registrar of the trademark. The same is required to be done within the 6 months of acquisition of proprietorship.
- The direction of the registrar is mandatory before the expiry of 6 months in case when trademark assignment is done with the goodwill or of registered mark.
- Registrar will specify the advertisement of trademark assignment. Once the specification is done, applicant can make the advertisement accordingly. The applicant is required to submit a copy of the advertisement and registrar’s direction in office of registrar.
- In the final step, once the registrar gets satisfied with the documents submitted, he shall officially transfer the trademark from original to the new owner.
Now, the name of the new assignee is registered as a new proprietor. After this, the assignee is eligible to use the trademark as per the terms of the agreement.
What is the prescribed form for the Trademark Assignment?
An application for trademark assignment can be made in Form TM-24. For the joint request, the assignor and assignee can make a request in Form TM-23.
Conclusion;
The trademark assignment of a brand can open many opportunities with proper planning. It allows the third party to have access over the right of the real owner of the brand. With the assignment, brand remains alive, and both assignor and assignee avail various benefits. One of the famous examples of trademark assignment is of the Ahmedabad based brand, Havmor Ice Cream, which transferred its partial right over to Lotte Confectionary worth of Rs. 1020 crores.
Read our article : How Can You Apply For Online Trademark Registration in India?
Shailza Sharma
Miss Shailza Sharma, BA. LLB graduate from Himachal Pradesh University. She holds an experience of 2.5 years in various Legal companies and organizations.
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Trademark Assignment Agreement
This Agreement is entered by and between Jonas Adam, individually or collectively as the "Signee" and Jane Smith, as the "Signer", together referred to as the "Parties". The Contract is dated [ the date both parties sign ].
1. Agreement terms
The Parties agree that the following agreement is dependent on the terms presented as follow:
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What is a trademark assignment agreement.
A Trademark Assignment Agreement is a formal written contract that will transfer a "Trademark" (whether that is a phrase, symbol, word, or design) from its current owner to a future owner. This is a legally binding transfer.
A trademark is a very valuable thing to own because it becomes something that people will instantly associate with a recognized brand. This agreement will essentially transfer all the recognition, reputation, and amassed goodwill from one business to another party.
Trademark is often used in reference to both a trademark and also a service mark. The difference is that trademarks are used to identify goods and products, and service marks are used in reference to services a business provides, such as those sold or provided by a vendor . Consequently, Chili's is a service mark because the restaurant serves food, but a Bloomin' Onion is a trademark because it is a specific good.
What should a Trademark Assignment Agreement template include?
A sample Trademark Assignment Agreement template makes it very easy for you to draft your legal document. It will contain the date that the trademark transfer is effective, which is the date that ownership will officially be transferred to the new owner.
These Trademark Assignment Agreement templates should also contain the trademark itself. This should describe the word, symbol, phrase, or design that is legally recognized as a trademark. This description should include the trademark number that was officially assigned if the trademark was registered with the U.S. Patent and Trademark Office .
The sample Trademark Assignment Agreement also needs to name both the Assignor and Assignee. The Assignor is the current owner of the trademark. They will be giving ownership to the Assignee. This person is the one who is paying money to obtain the mark and will become the new owner.
It should also mention the price of the trademark sale. This is formally known as the Consideration. Any Warranties that are part of the agreement also need to be placed in the Trademark Assignment Agreement. Warranties are the guarantee that the Assignor is, in fact, the legal and true owner of the trademark and that they have all legal authority to transfer the ownership of the trademark.
The document will need to be signed by both the Assignor and the Assignee. The signatures need to be witnessed and notarized by a certified Notary Public in order to make the Trademark Assignment Agreement a legally binding agreement. This is especially necessary if you intend to take your trademark and register it globally once purchased.
What isn’t included in the Trademark Assignment Agreement?
You want to avoid miscommunication and mistakes because this is a vital part of the transaction. Remember that registering a trademark is not the same thing as registering the trade name of a product or service. These are separate processes and the Trademark Assignment Agreement does not address the trade name.
Trademarks can include more than just logos and phrases or words. Remember that a trademark can also be a name, a scent, a slogan, or even the shape of a container or product. This can even be a specific and distinct melody or pattern of musical notes. Even colors can be trademarked if they are purely a symbol. This was legalized in the 1995 US. Supreme Court case Qualitex Co. v. Jacobson Products Co., Inc.
What else is this document called?
This assignment is also known by a few other names. If you are doing business and other parties refer to the Assignment of Intellectual Property Rights Agreement, the Intellectual Property Assignment (IP), the Trademark Purchase and Assignment Agreement, the Assignment and Transfer Agreement, or the Transfer of Trademark Rights, they are referencing the same document. These are all other names that the Trademark Assignment Agreement is known by. This agreement could also be part of, or complement, agreements that formalize a business relationship, such as a joint venture agreement .
When do I need a Trademark Assignment Agreement?
You will need a sample Trademark Assignment Agreement template any time that you want to transfer the ownership of a service mark or trademark from one party to another. The Trademark Assignment Agreement is the legally binding document that makes the transfer official and legally binding and sets forth the terms of the purchase.
You will need a Trademark Assignment Agreement template to help you any time that you are transferring ownership. This usually happens when a company is being purchased or sold, or when a company is selling one of their products to another person, organization, or business entity.
There are a couple of types of trademarks that can be transferred. On a federal level, a federally registered trademark uses a symbol to designate the trademark. These are usually displayed with a ® or an ( R ). These trademarks have been legally registered with the U.S. Patent and Trademark Office (USPTO). When you have formally registered with the USPTO, you have extra rights because you have made the ownership of your trademark public and provided legally binding notice of ownership. These marks will all appear in the USPTO’s Trademark Electronic Search System for anyone who wants to look that information up online.
A common law trademark can also be transferred and become legally binding. These are unregistered trademarks. These symbols use ™ or ( TM ) to denote their status as a trademark. If it is a service mark, then they are notated using (SM). On occasion, the SM will also appear in the same small, elevated letters that TM shows. Generally speaking, a logo or the name of a brand will become automatically protected as soon as a company uses the mark during their commerce. This affords some rights if someone tries to take it, but will not have as many formal legal protections as a registered trademark would get.
What happens if I don’t use a Trademark Assignment Agreement to formalize the sale?
There are some very big consequences associated with neglecting to formalize the sale of this agreement. Without the Trademark Assignment Agreement, there won't be a paper trail or any clear legal record of the current trademark owner. Because these are extremely valuable assets, they should be protected.
Assignors will lose the time they spent establishing the mark and transferring it. They will waste money if another business uses the mark without paying you for that right. They could also suffer if the public’s goodwill disappears as a result of being confused about the product’s ownership.
Assignees will end up having a lot more difficulty proving that the trademark was transferred and they are legally allowed to use it and retain ownership. They could lose the money that they paid for the mark and lose even more money by not being allowed to capitalize on the usage of the mark. They will also not be allowed to register federally or globally without irrefutable proof of their ownership of the mark.
Employee Warning Letters
The discipline at a place of business differs immensely with some companies being far more strict than others. Even at the most relaxed companies there comes a time where a person on the staff will receive an employee warning letter . These are always due to poor performance or breaking a company rule. The last thing a company wants to do is not document disciplinary actions for an employee when they are terminated.
Wrongful termination suits are won regularly by disgruntled employees that were fired without the proper steps being taken. The following need to be outlined in an employee warning letter:
- The manager that is enforcing the warning should be listed along with the employee.
- The policy that has been violated should be highlighted. Action to remedy this and prevent further warnings should also be outlined in a clear way.
- Actions that will be taken if there is another violation or continued poor performance. Termination or suspension should be mentioned if these are the next steps.
There will be some employees that take the letter as a form of motivation to perform better. Others might start a job search which is within their rights.
Joint Venture Agreements
Collaboration by businesses has increased due to technology that improves the ease and modes of communication. There are going to be terms of the relationship that need to be detailed in a joint venture agreement . The last thing any business wants is a company they are working with taking advantage of the relationship. Below are the details that need to be explicitly detailed in a joint venture agreement:
- Both companies, as well as their locations, need to be detailed. State laws differ so this will help avoid any future issues.
- Expectations of the agreement are to be outlined as well.
- A portion of the document should include an NDA and what information is restricted.
- Terms of payment or distribution of revenue also need to be included.
A company can become far more successful with the right relationships. This does not mean that the company should not protect itself in case of a business relationship turning sour. The world of business has become far more global and competitive due to businesses entering into joint ventures.
Rent Receipts
Renting can be quite easy if the landlord and tenant have realistic expectations of one another. Obtaining a rent receipt when subleasing is very important. For those paying in cash, a receipt will be the only proof of payment available. Asking for a rent receipt might not be required as online payments or checks can easily be looked up online.
The last thing a tenant wants is a landlord claiming they have missed the rent payment simply because they paid in cash without receiving a receipt. The rent receipt should contain the following details:
- The names of both parties along with the address of the property.
- Amount of payment and reason for payment. Rent or utilities are the most common payments that are made.
- The date of the payment and signatures of the tenant and landlord are required.
Protect yourself by obtaining a rent receipt if you are worried about an unethical landlord.
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What is the Trademark Assignment Agreement? – A Complete Guide
Karan Singh | Updated: Mar 25, 2021 | Category: Trademark
Trademark Rights are transferrable through the Trademark Assignment Agreement. When a registered trademark is assigned by an owner to another party, then the ownership of a Trademark is deliberated upon the other party, either with goodwill (completely) or without goodwill (for a restricted number of goods or services). Such a Trademark Assignment Agreement, often called an Assignment Deed, can be signed even if the trademark registration is not done; innovative creators or inventors, for instance, are often asked to give ownership of the work to the company that appointed it. And, of course, already registered Trademarks can also be assigned. In both cases, the assignee should apply to the Trademark Registrar within six months. Scroll down to check more information regarding the Trademark Assignment Agreement.
Table of Contents
What is a Trademark?
Trademark is a sign, name, or logo which differentiates products and services of a specific company from others in the market, and such mark comprises design, logo, phrases, word, names, signatures, etc. By registering your Trademark, you can protect your Trademark from being copy or misuse by any other unauthorized person or any third party without permission. TRIP or Trademark Related Aspects of Intellectual Property Rights agreement defines Trademark regarding laws from Article 15 to 2. The Trademark Agreement offers seven years of protection for Trademarks that are renewable before the specified time.
Let’s Understand About Trademark Assignment Agreement
Trademark Assignment Agreement is the transfer of a Trademark owner’s rights, title or name, and interest in service mark/Trademark. The transferring party or assignor transfer property rights in the mark to the receiving party called the assignee. But, a Trademark Assignment is different from a license; a license is only for the permission grant to use a Trademark, but it doesn’t transfer any ownership rights and is linked with TTA or Technology Transfer Agreements. Such type of Agreements are essential to occur as an additional Intellectual Property (IP) can put a company in the problem. Further, the Trademark Assignment is also a vital part of its monetization.
Different Types of Trademark Assignment
- Complete Trademark Assignment Agreement : In this type of assignment, the Trademark’s owner transfers their full rights and ownership to the other party or assignee related to the Trademark. It also comprises the right to make more transfer to another assignee. After the complete Trademark Assignment, the owner completely loses their rights over the Trademark, and the assignee or other party or person holds all the Trademark rights and ownership.
- Partial Trademark Assignment :In this type, the transfer of Trademark ownership is done to some limited products and services only. The assignor holds the rights over the portion which they have not transferred to the assignee in terms of Trademark Assignment. The assignor has the exclusive right to make a choice related to the Partial Agreement. The assigner can use these rights in their management and business.
- Assignment of Trademark with Goodwill : In this, the assignor can transfer the Trademark ownership rights and the image valued rights over the Trademark. Then the assignee can use such demonstration in the market reputation of the Trademark for the product’s promotion.
- Assignment of Trademark without Goodwill: Here are some limitations on the usage of the Trademark products on the assignee’s part, which means the assignor can restrict the assignee from not using the Trademark in the business. The same Trademark is used by both the assignee and assignor in various fields of business. This Trademark Assignment is also known as Gross Trademark Assignment. As per the Trademark Mark Act, in the case of registered marks, there are some limitations on the assignment of already registered Trademarks under Section 40 of the Trade Marks Act, wherein the possibility of creating confusion exists in the public’s mind.
What are the Advantages of the Trademark Assignment Agreement?
Following are the main advantages of a Trademark Assignment Agreement:
- Unlock Value: With a Trademark Assignment Agreement, the owner of a brand is able to unlock the brand value, which, until this time, only has value only on paper. On the other side, the assignee could be knowingly better off entering a market with an already well-established brand rather than creating a new one which takes more time and money.
- Valid Proof: In case of any problems related to the Trademark, the legal right would be easily established through the deed. The Trademark Registrar make sure that all the checks are in the right place by inspecting the validity of all clauses in the Trademark Agreement and publishing the same in the Trademarks Journal.
Registration of a Trademark Assignment
The Registration procedure for the Trademark Assignment is done under Section 45 of the Trade Mark Act, 1999. Where an individual becomes permitted by assignment to a registered Trademark, they shall apply in the suggested manner to the Trademark Registrar to register their title. Trademark Registrar shall, upon the application receipt, register them as the owner of the Trademark in respect of the products or services in respect of Trademark Assignment.
Trademark Registrar may need some more pieces of evidence and statements in proof of name/title if there is any judicious doubt about the statement’s reliability or any document furnished.
In case the Trademark Assignment validity is in an argument between the parties, the Trademark Registrar may reject the assignment registration until the right of parties has been determined by a knowledgeable court . Until an application is filed in an above-mentioned manner, the Trademark assignment will be unsuccessful against a person obtaining the incompatible interest in or under the registered Trademark without any understanding of the assignment.
Transmission Agreement
Generally, Trademarks are assigned by way of a properly implemented Trademark Assignment Agreement, which states the transfer of the Trademark from one entity to another who is the owner of other entity. It’s to make sure that when drafting such agreement that:
- Rights of the brand’s owner are not severely affected due to the obligations contained;
- The decision and requirement concerning whether the Trademark Assignment should be with or without the goodwill of the business is negotiated and stated;
- Draft the agreement by remembering the purpose of the transaction in question.
A Trademark is licensed by the method of License Agreement. As per the Trade Mark Act, 1999, conflicting to the requirement in an agreement case, the License Agreement Registration with the Trademark Registrar of a mark is voluntary, advisable and not mandatory. Further, like in a Trademark Assignment Agreement, it’s again essential that while drafting a License Agreement, the responsibilities and the rights of the licensee are uniquely defined and pre-determined. This is crucial not only to safeguard the Licensor’s right in its own brand and to safeguard any misuse but also to prevent the licensee with their rights to use such brand.
The agreements of the assignment are always vital in Intellectual Property. It permits the owner to transfer their rights of ownership for commercial purposes and make sure that the financial gains to him or her. It’s a written, enforceable contract that relates to transfer the rights in a solemnize agreement between two individuals. It safeguards and regulates the exclusive rights of all the parties or entities involved in the agreement. This agreement also includes the sale of the rights, which provides the assignee full ownership over the Trademarks of the assignor.
Also, Read: Procedure for Trademark Assignment in India: A Complete Guide
A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.
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TRADEMARK ASSIGNMENT AGREEMENT
- Post author: LawFoyer
- Post published: 9 August 2022
- Post category: Agreement Draft
- Reading time: 1 mins read
WHEREAS, [INSERT OWNER OF MARK-ASSIGNOR NAME, ENTITY TYPE, and ADDRESS], has adopted, owns and has been using the Mark [INSERT MARK] (the “Mark”) in connection with the following goods and/or services: [INSERT DESCRIPTION OF GOODS AND SERVICES]; and
WHEREAS, Assignor has applied to register the Mark on the Principal Register of the United States Patent and Trademark Office in connection with the above-described goods and/or services, Application Serial No. [INSERT] filed on [INSERT]; and
WHEREAS, [INSERT ASSIGNEE NAME, ENTITY TYPE, and ADDRESS] (“Assignee”), desires to acquire the Mark, and the application which has gone abandoned.
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, Assignor hereby sells, assigns and transfers to Assignee all right, title and interest in and to the Mark, together with the goodwill of the business symbolized by the Mark, and the pending application for registration. [INSERT ASSIGNOR NAME]
By: _____________________________ Name:_____________________________ Title: _____________________________
Dated effective as of: [INSERT DATE]
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Trademarks as per the Trademark Act of 1999 are specific symbols, signs, colors, marks, etc., capable of being represented graphically and which distinguish the goods or services of one person from those of others. In a highly competitive demand-driven market, it is quite important that a business person is able to distinguish his or her products and services from the other similar products and services, that’s why businesses develop their trademark. One most common example of a type trademark is a brand name, which becomes synonymous to the product they deal in or the sector in which it works like Microsoft or Android is synonymous to operating systems or Uber to mobile taxis.
Trademarks are essentially legal rights granted to a certain person, trademark is actually a creative concept lacking a singular tangible form, hence they cannot really be sold but the underlying rights can be assigned to a person, such assignment can take for whole or limited rights in relation to the trademark, the instrument used for such assignment is referred to a trademark assignment agreement.
1. Are trademark assignment agreements necessary to effectuate an assignment?
Under the Trademarks Act 1999, section 2(1)(b) an assignment is an assignment in writing by an act of the parties. Therefore, to effectuate an assignment, it is necessary it is done so in writing thereby making a trademark assignment a necessity under the Trade Marks Act.
2. Can unregistered trademarks be assigned under a trademark assignment agreement?
Under section 39 of the Trademarks Act, a person holding rights in an unregistered trademark may assign, with or without the goodwill of the business concerned.
3. Can registered users under the Trade Marks Act 1999 assign trademarks?
Section 54 of the Trade Marks Act states that a person, being a registered user of a trademark may not assign or transfer any rights in the trademark by virtue of being a registered user.
4. What should one pay attention to in a trademark assignment agreement?
A copyright license agreement should contain the following terms:
- Exclusivity of assignment
- The scope of use of the property
- The jurisdiction or area for which assignment is granted
- Warranty as to the title of the trademark
- Non-compete
- Non-solicit clause
IMAGES
VIDEO
COMMENTS
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.
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. 9. Severability.
TRADEMARK ASSIGNMENT AGREEMENT This Trademark Assignment Agreement (the "Agreement") is entered into this 21st day of December, 2006 (the "Effective Date") by and between Applied Digital Solutions, Inc., a corporation duly organized and existing under the laws of the State of
A Trade Mark Assignment Agreement ("Assignment Agreement") is a legal document under which the Trade Mark owner, known as "Assignor," assigns another person or entity to own such rights, known as "Assignee", in exchange for an agreed payment, known as a "Consideration". Trade Mark is a word or symbol representing a company or product.
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.
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") AND [Insert Assignee Name] [Insert Assignee Address] (the "Assignee")
A Trademark Assignment Agreement is a legal document that allows parties, an assignor and assignee, to record the purchase and sale of a federally registered trademark. This is the document for you if you need to buy or sell a registered trademark or service mark and if you want to remove, add, or change the name of the owner of the mark.
The trademark assignment agreement is one of the stepping stones in a lawful transfer of assets, products, and services. It builds a strong foundation in fulfilling future plans and endeavors. Basically, it is to safeguard whatever assets that the proprietor has and can transfer them to another rightful owner. FAQs
Trademark assignments: Transferring ownership or changing your name Trademark assignments: Transferring ownership or changing your name Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered.
Page 6 of 7 10) Governing Law & Jurisdiction: This agreement shall be governed and construed in accordance with the laws of India, and any disputes therein shall be subject to the Jurisdiction of courts of Pune. 11) Notice: Any notice to be given under this Agreement shall be sufficient if it is in writing and is sent by certified or registered post to Party to the First Part at his/her ...
A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.
A trademark assignment is the transfer of an owner's property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties. ... draft an assignment that will meet your ...
A properly-drafted trademark assignment can help in both circumstances. A trademark assignment is the transfer of an owner's property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases.
Drafting of Trademark Assignment Agreements Trademark assignment agreement is a written contract that transfers the registered trademark ownership to another person. Special provisions are to be added to the contract, depending on what the trademark owner provides.
The first step is to form an application for the assignment of trademark. The plea can be made either by the assignee or assignor or by both. Furnish all the required details of the transfer mention under form TM-P. After completing the application drafting, the same is required to be submitted with the registrar of the trademark.
A sample Trademark Assignment Agreement template makes it very easy for you to draft your legal document. It will contain the date that the trademark transfer is effective, which is the date that ownership will officially be transferred to the new owner. These Trademark Assignment Agreement templates should also contain the trademark itself.
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Trademark Assignment Agreement is the transfer of a Trademark owner's rights, title or name, and interest in service mark/Trademark. The transferring party or assignor transfer property rights in the mark to the receiving party called the assignee.
TRADEMARK ASSIGNMENT AGREEMENT. Home > Legal Drafts > Agreement Draft. TRADEMARK ASSIGNMENT AGREEMENT. Post author: LawFoyer; Post published: 9 August 2022; Post category: Agreement Draft; Reading time: 1 mins read; WHEREAS, [INSERT OWNER OF MARK-ASSIGNOR NAME, ENTITY TYPE, and ADDRESS], has adopted, owns and has been using the Mark [INSERT ...
Are trademark assignment agreements necessary to effectuate an assignment? Under the Trademarks Act 1999, section 2(1)(b) an assignment is an assignment in writing by an act of the parties. Therefore, to effectuate an assignment, it is necessary it is done so in writing thereby making a trademark assignment a necessity under the Trade Marks Act ...