recordal of assignment of trademark

Kluwer Trademark Blog

Worldwide trademark assignments – tips, tricks and best practices.

It is a common occurrence in the lifetime of a brand for ownership to change. In some cases, multiple times as part of corporate restructuring or the sale of a brand. The cost and process for recordals can vary significantly in different countries.

Generally, it is recommended that ownership be updated with local Trademark Offices. If not, this could affect the client’s ability to enforce its rights and affect the registration of new similar marks.

After completing a worldwide assignment recordal project for a multinational corporation with applications and registrations in nearly two hundred countries, we would like to share what we have learned and provide our tips and best practices.

Preparation and planning are of primary importance. First, we suggest asking foreign associates to provide:

• Timelines for recordal
• Document requirements, such as whether Powers of Attorney are required
• Appropriate signatories
• Is notarization or legalization required?
• Do the documents need to be translated?
• Confirmation of details of trademarks being assigned, including details on ownership e.g., the owner name and address
• Does the owner name and address match that on record and, if not, do these changes need to be recorded separately and prior to the assignment?
• What if some of the marks are not of interest and the client does not wish to record the ownership change against such marks?
• Can an assignment be recorded against pending applications?
• Costs for providing/confirming the information and attending to all aspects of the recordals

Before preparing and arranging for any documents to be executed, determine if there are constraints on when the assignor and assignee can sign the documents. Are there deadlines to invoice? If drafting a worldwide assignment, it may be possible to create a document that is acceptable in multiple jurisdictions. Remove unnecessary information and consider having the foreign associate prepare jurisdiction-specific documents for countries with very specific requirements for recordal. Arrange for multiple original copies of the assignment to be signed as these may come in handy if difficulties are encountered with the filing of certified copies.

Document Requirements

Powers of Attorney are often required. Determine if the original is required or if it is acceptable to provide an electronic signature and transmission. In some countries, the original Certificate of Registration or Renewal is necessary. If the client does not have these records, certified copies can often be ordered. However, this could delay recordal and increase costs. In some cases, corporate documentation on the parties is requested, such as certificates of incorporation or documents showing that the signatory has authority to act on behalf of the corporation. It is often possible to arrange for additional documentation to be prepared in advance, and preferable to do so if the assignor company is going to be dissolved following the transfer.

It is not uncommon to discover that prior ownership changes were not recorded, and the owner of record may no longer exist. In some cases, there could be a typographical error on the record or an old address which will also need to be corrected. Certain countries require that the assignor’s name and address on documents filed with the Trademarks Office match exactly with the name and address on record, which could necessitate multiple recordals to correct or bring that information up to date. In other countries, ownership changes cannot be recorded against pending applications, which could result in lengthy delays for completion.

While it may be tempting to outsource assignment recordals to third party services who purport to offer heavily discounted rates, it may be advantageous to work with preferred local counsel who may be prepared to offer discounted rates and ensure fewer surprises arise based on their expertise and prior and existing knowledge of the marks.

In our experience, recordals in Australia, New Zealand, Canada, the U.S., the EU, U.K., and Singapore are easy to file and not costly. Recordals in China and certain Middle Eastern and Latin American countries can be challenging because of their highly specific document requirements for recordal. For example, certain countries go so far as to require that the passport numbers of the signatories be included in the assignment. Legalization can also be a challenge, and it is important to confirm requirements with the consulates in advance to ensure that the necessary documents are available.

Remember, Trademark Offices are constantly changing, and information obtained in the past may no longer be up to date.

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Trademark assignment—How-to guide

Find out more about business management

by   LegalZoom staff

Read more...

Updated on: February 15, 2024 · 10min read

1. Overview

• 2. Do's & don’ts checklist

3. Trademark assignment instructions

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. Do's & 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 in 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. 

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 or break an obligation under the agreement, it does not mean that the 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 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 the 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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Trademark Assignment Recordation

A trademark assignment recordation is filed with the U.S. Patent and Trademark Office to maintain current records of trademark ownership. 3 min read updated on February 01, 2023

What Is a Trademark Assignment Agreement?

A trademark assignment agreement is a legal document that transfers a design, symbol, phrase, and/or word from the assignor (current owner) to the assignee (future owner). On the other hand, a license grants permission to use a mark without transferring the mark's ownership rights. A trademark is a valuable, intangible asset that customers use to associate quality with a brand. A trademark assignment agreement allows a business owner to transfer the goodwill of the business to another party.

What Is the Difference Between Trademark and Service Marks?

The term "trademark" is also used to refer to service marks. Service marks will identify services provided, while trademarks identify goods or products. For example, McDonald's is a service mark, while Big Mac is a trademark because it's referring to a tangible product.

A trademark assignment agreement may also be referred to as:

• Transfer of trademark rights
• Intellectual property assignment
• Assignment and transfer agreement

Too much intellectual property can become a burden on a business. For example, the costs associated with administering the following operations may put a financial strain on the resources of the company:

• Creating and marketing the final product
• Defending against third-party claims
• Directing capital towards maintaining registrations

Basic Elements of a Trademark Assignment Agreement

There are 10 basic elements that every trademark assignment agreement should include:

• A formal written document (not oral)
• An effective date that specifies when the transfer occurs
• A description of the trademark, including the trademark number if it's been registered with the U.S. Patent and Trademark Office (USPTO)
• Identification of the assignor
• Identification of the assignee
• How much consideration is being transferred to the assignor for the trademark
• Guarantee from the assignor that they are the owner and have the right and authority to transfer the mark
• Signatures from both the assignor and assignee
• Notarization of the agreement if you're expecting to register the mark in a foreign country
• Identification of the amount of goodwill included in the transfer

Other topics that should be considered when creating an assignment agreement include:

• Are there any coexisting agreements that are imposable on legal successors?
• What is the geographic scope of the assignment?
• Are there any rights under third-party contracts?
• Are there any security interests or licenses previously granted by the assignor that should be released or addressed?
• Who is responsible for paying the recordation fee and recording the assignment?
• Are indemnification provisions desired?

How Are the Trademark Assignments Recorded?

The USPTO is responsible for recording all trademark assignments. A request to record a trademark assignment may be filed online using the Electronic Trademark Assignment System (ETAS). Trademark applicants may create and submit a cover sheet for the recording of a trademark assignment. Any legal documentation supporting the assignment should also be submitted.

There is a $40 filing fee for recording the first trademark registration or assignment. All subsequent filings for the same trademark owner cost $25. Contact the assignment division of the USPTO with a written request to stop the recording of a trademark assignment. If the assignment division is able to cancel the recording, they will refund the filing fee.

If the assignment has already been recorded, it will not be possible to have it canceled. In cases where the error is due to the USPTO, the assignment division will correct it without charging an additional fee. §503.06- §503.06(d) in the trademark manual will guide trademark owners through the necessary steps to correct the assignment records. Remember, an update that's been completed with the assignment division doesn't necessarily update or change the ownership of record within the USPTO database.

Under normal circumstances, there's no need for a trademark owner to contact the USPTO regarding a request for a new certificate of registration or a change of ownership. In all other circumstances, the owner should contact the USPTO in writing about any changes in ownership so that the database may be updated. The USPTO database displays the most up-to-date ownership information. All other inquiries regarding the chain of title may be viewed in the assignment branch database .

If you need help with trademark assignment recordation, 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

• USPTO Trademark Assignment: Everything You Need To Know
• Trademark Transfer: Everything You Need To Know
• Assignment Law
• Legal Assignment
• Assignment Legal Definition
• What is an Assignment and Assumption Agreement
• Assignment Of Contracts
• Assignment of Rights Example
• Assignment of Rights and Obligations Under a Contract
• Assignment Contract Law

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Related Practices & Jurisdictions

• Intellectual Property
• Litigation / Trial Practice
• Federal Circuit / U.S. Court of Spec. Jurisdiction

After a trademark achieves federal registration, ownership of the mark may change hands for a variety of reasons. When a trademark owner transfers their ownership in a particular mark to someone else, it is called an assignment. Generally, for an assignment of a trademark to be valid , the assignment must also include the ‘goodwill’ associated with the mark (goodwill is an intangible asset that refers to the reputation and recognition of the mark among consumers). If the assignment of a trademark includes the mark’s goodwill and is otherwise legal, the assignee gains whatever rights the assignor had in the mark. Importantly, this includes the mark’s priority date, which has implications for protecting the mark from potential infringers going forward.

In contrast, if an assignment of a trademark is made without the mark’s accompanying goodwill, then it is considered an assignment “in gross” — and the assignment is invalid under U.S. law. Courts have analyzed whether an assignment was made in gross in a few different ways, but, as is the case with much of trademark law, protecting customers from deception and confusion is the primary motivation behind any analysis for determining the validity of an assignment.

One way courts determine if an assignment was made in gross is through the substantial similarity test. This test essentially examines whether the assignee is making a product or providing a service that is “substantially similar” to that of the assignor, such that consumers would not be deceived by the assignee’s use of the mark. This analysis includes an assessment of the quality and nature of the goods and services provided under the mark post-assignment.  Thus, even if an assignee is using the mark on the same type of goods, but the goods are of lower quality than the goods previously offered by the assignor under the mark, the assignment could be invalid. However, slight or inconsequential changes to goods and services after an assignment are not likely to invalidate the assignment, as such changes are to be expected and would not thwart consumer expectations.

Decisions on the question of substantial similarity are only marginally instructive, as the  test calls for a fact specific inquiry into what the consuming public has come to expect from the goods or services offered under a given mark. For example, courts have noted that despite similarities in services and goods, “even minor differences can be enough to threaten customer deception.” [1] Instances of products or services that were deemed not substantially similar (and thus resulted in invalid assignments) include: an assignee offering phosphate baking powder instead of alum baking powder; [2] an assignee using the mark on a pepper type beverage instead of a cola type beverage; [3] an assignee producing men’s boots as opposed to women’s boots; [4] an assignee using the mark on beer instead of whiskey; [5] and an assignee selling hi-fidelity consoles instead of audio reproduction equipment. [6]

Conversely, case law has also shown that substantial similarity can be found even when products or services do differ in some aspects, if consumers aren’t likely to be confused. For example, the following product changes did not result in a finding of an invalid assignment: an assignee offering dry cleaning detergent made with a different formula; [7] an assignee using thinner cigarette paper; [8] and an assignee selling a different breed of baby chicks. [9]

Whether goods or services are substantially similar may seem like an easy test to apply, but, as case law demonstrates, this fact-intensive analysis can yield results that look strange in the abstract. Disputes involving the validity of a trademark assignment are decided on a case-by-case basis, using the specific facts at hand to determine if consumer expectations are being met under the new use. Thus, while trademarks acquired through assignment can have significant value (and grant the assignee important rights formerly held by the assignor), assignees should be wary of changes to goods or services under an acquired mark that could be seen as deceiving the public.

[1] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[2] Independent Baking Powder Co. v. Boorman , 175 F. 448 (C.C.D.N.J.1910).

[3] Pepsico, Inc. v. Grapette Company , 416 F.2d 285 (8th Cir. 1969).

[4] Clark & Freeman Corp. v. Heartland Co. Ltd. , 811 F. Supp. 137 (S.D.N.Y. 1993).

[5] Atlas Beverage Co. v. Minneapolis Brewing Co. , 113 F.2d 672 (8 Cir. 1940).

[6] H. H. Scott, Inc. v. Annapolis Electroacoustic Corp. , 195 F.Supp. 208 (D.Md.1961).

[7] Glamorene Products Corp. v. Procter & Gamble Co. , 538 F.2d 894 (C.C.P.A. 1976).

[8] Bambu Sales, Inc. v. Sultana Crackers, Inc. , 683 F. Supp. 899 (1988).

[9] Hy-Cross Hatchery, Inc v. Osborne 303 F.2d 947, 950 (C.C.P.A. 1962)

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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. Your Florida trademark lawyer 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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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the Electronic Trademark Assignment System ( ETAS ).  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

15 CFR § 280.323 - Transfer or assignment of the trademark registration or recorded insignia.

(a) A trademark application or registration which forms the basis of a fastener recordal may be transferred or assigned. Any transfer or assignment of such an application or registration must be recorded in the United States Patent and Trademark Office within three months of the transfer or assignment. A copy of such transfer or assignment must also be sent to: Director, United States Patent and Trademark Office , ATTN: FQA, 600 Dulany Street, MDE–10A71, Alexandria, VA 22314–5793.

(b) Upon transfer or assignment of a trademark application or registration which forms the basis of a certificate of recordal, the Director, USPTO , shall designate the certificate of recordal as inactive. The certificate of recordal shall be deemed inactive as of the effective date of the transfer or assignment. Certificates of recordal designated inactive due to transfer or assignment of a trademark application or registration cannot be reactivated.

(c) An assigned trademark application or registration may form the basis for a new application for recordal of a fastener insignia.

(d) A fastener insignia consisting of an alphanumeric designation issued by the Director, USPTO , can be transferred or assigned.

(e) Upon transfer or assignment of an alphanumeric designation, the Director, USPTO , shall designate such alphanumeric designation as inactive. The alphanumeric designation shall be deemed inactive as of the effective date of the transfer or assignment. Alphanumeric designations which are designated inactive due to transfer or assignment may be reactivated upon application by the assignee of such alphanumeric designation. Such application must meet all the requirements of § 280.310 and must include a copy of the pertinent portions of the document assigning rights in the alphanumeric designation. Such application must be filed within six months of the date of assignment.

(f) An alphanumeric designation that is reactivated after it has been transferred or assigned shall remain in active status until the expiration of the five year period that began upon the issuance of the alphanumeric designation to its original owner.

• Jun 9, 2021

Can I Transfer My Trademark? How?

This is one of the commonly asked questions by trademark owners about trademark. The answer is yes, a trademark is an intangible asset which can be transferred from one to another. The process is generally known as, assignment of trademark.

Section 64(1) of the Malaysian Trademarks Act 2019 ("Trademarks Act") provides that, a registered trademark shall be transmissible by assignment or assignment in the same way as other personal or movable property, and shall be so transmissible either in connection with the goodwill of a business or independently"

"Wait, does it mean only registered trademark can be assigned? What happened to unregistered trademark?"

Fret not, unregistered trademark can be assigned too! Section 64(6) of the Trademarks Act provides that, nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business. (Phew!)

How to assign a trademark ownership?

To kickstart the process, the original owner of the trademark ("Assignor") and the new owner of the trademark ("Assignee") should sign a deed of assignment, a legal instrument that transfer the trademark from the Assignor to the Assignee. One deed of assignment may include multiple trademarks. The deed of assignment contains the terms and condition to transfer the trademark. Generally, it should include the identity of parties, the details of trademark to be transferred, effective date of transfer, and the consideration, ie. the transfer price. The consideration may be a nominal sum.

Once the parties have signed the Deed of Assignment, the document should be filed with the Government Trademark Office, with the prescribed official form (Form TMH-1) and fees.

Upon filing the documents, the Malaysian Trademark Office will usually take a few months to record the assignment into the database of the registry.

Although it seems like may take some time, but the effective date of transfer of ownership is based on the date of deed of assignment, not the date of recordal by the Trademark Office. So the rights of the parties are not affected, despite the heavy workload in the Trademark Office.

Who should be responsible to file the assignment?

There are no hard and fast rules as to whether the deed of assignment and/or application for recordal of assignment should be done by the assignor or assignee. The parties may decide on a case-to-case basis.

International Assignment of Trademarks

Since registration and protection of trademark is territorial based, the recordal of trademark assignment will also be done country by country.

In some countries, a universal deed of assignment is acceptable. Hence the same document may be used to apply for recordal of trademark assignment in a few countries and save some legal fees in drafting a separate deed of assignment in each country.

However, in some countries, there are specific requirements on format or languages of the Deed of Assignment.

So, it is always safe not to assume and you should seek consultation from your trademark agent .

When is the best timing to assign trademark ownership?

There are many reasons that prompt the need of assignment of trademark. For example, sale of trademark, corporate restructure, moving a business from sole proprietorship to private limited company (Sdn. Bhd.) or vice versa & etc.

Once you have decided any of the above moves, the assignment of trademark should be done immediately without any delay.

There are many instances that the assignment of trademark has been delayed due to procrastination or overlook. This may lead to serious and unwanted consequences.

For instance, after a few years, upon realizing the need of doing the deed of assignment, if the assignor has ceased to operate or passed away (for individual assignor), this may complicate the process of recordal of assignment due to the difficulty in locating the assignor to sign the documents.

Another example is, there may be a problem when the assignee needs to take legal action against trademark infringer, as the legal ownership of the assignee on the trademark is questionable.

Looking for assigning the ownership of your trademark? Don't wait! Contact us today!

Written by,

Li Yen Seow

IP Legal Executive

Bachelor of Laws

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.

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China: Several Tips In Trademark Assignment Negotiations

Trademark embodies the goodwill of a company and is one of the core assets of the company. Therefore, unless there is a special need, enterprises usually may not transfer their trademarks. However, in trademark administrative cases , we also often see trademark assignments. The reasons are mainly as follows:

1. The applicant applies to register a trademark, but it was blocked by cited trademarks. So if the applicant cannot remove the cited marks by opposition, non-use cancellation or invalidation or if the applicant fails to remove the cited trademark in opposition, non-use cancellation or invalidation, then the applicant may consider assigning the cited marks into their own name.

2. Another situation is that other companies or individuals maliciously rush-register a trademark so the true owner needs to get the mark by assignment. This situation was very common before 2019 - usually applicants from foreign countries used the trademarks and obtained certain reputation outside mainland China. However, it has not entered the Chinese market, so some Chinese owners have maliciously rush-registers the marks. Their purpose is also to identify the future value of the mark in Chinese market, and then attempt to sell the trademark at a high price through trademark transfer. After 2019, the CNIPA intensified the provision on malicious registrations without real use purpose, i.e. Article 4 of China Trademark Law. Such cases have become much less and less, but there are still cases where individual registrants preemptively register others' well-known foreign trademarks in small quantities. Since it is difficult for the true owner to invalidate or oppose to the mark according to Article 32 of China Trademark Law, the preferred strategy should be to assign the trademark.

So in the possible trademark assignment negotiations, we need to pay attention to the following issues:

1. Under the first circumstance, the other party may not be willing to transfer the trademark, especially if the mark is currently in use or the owner intends to use it. If the other party insists on not considering selling its trademark, then our transfer negotiations will have to be stopped. If the owner of the cited mark does not use the trademark, then we can further discuss with the other party about the price issue and transfer details. Note that in this case, the cited mark and the client's trademark are similar but not exactly the same, and the designated goods are also somewhat different, so it is unlikely that the client can directly use the trademark after purchasing it. The only purpose of the client purchasing the trademark is to clear the obstacles in the process of applying for trademark registration, so we have to keep the price as low as possible. On the other hand, since the owner of the cited mark does not register the cited trademark in bad faith, he often does not have high expectations for the assignment price.

2. Under the second circumstance, the owner is more willing to sell the mark, so sometimes he has a very positive attitude. Because the purpose of registering the mark is not to actually use but to sell it at a high price to make a profit, when someone contacts the owners to negotiate trademark assignment, the owners' attitude is generally more positive and the price offered is higher. In order to avoid the other party's request for high trademark transfer fees, we can consider hiding the client's true information and conduct the negotiations anonymously first.

The following issues are common and we need to pay attention to them during the assignment negotiation:

First of all, for trademarks that have not been approved for registration, i.e. for marks that are still under substantial examination, or have been preliminary approved but still in the opposition period, we do not recommend filing assignment before their registration is published. The reason is that the status of the mark is unstable and may eventually become invalid due to rejection or opposition. If the trademark is ultimately not approved for registration due to various reasons, then the transfer of the trademark is essentially unnecessary. In addition, there may be a risk that the client's down payment for purchasing the mark will not be returned. In this case, if corresponding relief methods are not agreed upon in the assignment contract, the client will be more passive in subsequent procedures.

Secondly, it is best to stipulate in the trademark assignment contract that "from the date of signing the contract to the date of the trademark assignment recordal is published, the assignor shall not claim infringement against the assignee for the use of the trademark." Before the assignment recordal is published, the assignor is still the legal right holder of the trademark, so the market behaviors of the assignee constitute trademark infringement. In order to avoid this problem to the assignee, we also recommend that the above terms be stipulated in the assignment contracts.

Finally, it is necessary to write into the assignment contract the clauses regarding the assignment of all of the existing same/similar trademark over same/similar goods and services, and the prohibition on applications of any other same/similar mark over same/ similar goods and services, because this will effectively solve the similar trademarks problems.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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• Recordal of assignments UKIPO EUIPO and EPO Trade Marks

Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

Trademark recordal in Uganda

What is a trademark recordal?

A recordal is an entry in a Trademark Register, the database containing particulars of all trademarks and designs registered by the Registrar of Trademarks in Uganda, which implies the amendment of certain information therein.

Trademark validity in Uganda

A trademark in Uganda is valid for an initial period of seven years from the filing date and consecutive periods of 10 years thereafter. Applicants need only submit a simply signed power of attorney or Form of Authorization (TM no. 1) to an agent (Advocate of the High Court) to file a renewal. There is a continuous non-use period of three years from the granting date, after which the mark may be subject to cancellation.

During the lifespan of a trademark, it may be necessary to amend the initially filed registration, given that the applicant or its details may change, and it is crucial that the information provided is accurate. In addition, any unrecorded information before the registry is not enforceable against third parties. The following are matters that can be a subject of a trademark recordal in Uganda provided that the formal requirements are met:

• Trademark 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 provide records of ownership and transfer and protect the rights of all parties.

For a recordal of an assignment, the applicant must submit a Form of Authorization together with a deed of assignment with a verified English translation.

2. Change of trademark proprietor’s name

Trademark owners/ proprietors reserve the right to change their names in accordance with the procedure provided for the change of names in the respective countries of origin and as dictated by the type/ nature of owner. A name change is also a chance to freshen the brand and show consumers that the company is keeping up with the times. Often, a name change simply aligns the company with language already being used by customers.

For a recordal of change of name, the applicant must submit a Form of Authorization, and a certificate of a change of name, with a verified English translation.

3. Change of address

As part of the requirements for trademark registration, applicants are expected to submit their address. This address used at the point of registration may change during the course of the trademark validity and as such may require, as a matter of practical prudence, to be changed.

For a recordal of change of address, the applicant must submit a simply signed power of attorney.

4. Trademark Licensing

Trademark licensing is the process by which a registered trademark owner, called a licensor or proprietor, allows another party, called a licensee, to make and distribute specific products or services under the licensor’s trademark agreement. Trademark licensing is a type of merchandise agreement.

For a recordal of a licence, the applicant must submit a Form of Authorization from the owner and licensee together, and the trademark licence agreement, with a verified English translation.

The contents of this article are intended to convey general information only and not to provide legal advice or opinions. The contents of this website, and the posting and viewing of the information on this website, should not be construed as, and should not be relied upon for legal advice in any particular circumstance or fact situation. An Advocate/ attorney should be contacted for advice on specific factual legal issues.

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March 6, 2018

Recording assignments and licenses of trademarks in India

Can a trademark be transferred from one person to another.

Trademarks like any other asset can be transferred from one proprietor to another. The transfer could be temporary through licensing or permanent thorough an assignment. A registered mark, or a mark for which an application to register has been filed is assignable/transferable.

What is the difference between Assignment of Trademark and Licensing of Trademark?

In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.

What is Assignment of Trademark?

Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership and proprietary rights of the trademark either with or without the goodwill of the business. The manner in which an assignment can be made are as follows:

• Complete Assignment to another entity
• Assignment to another entity but with respect to only some of the goods/ services
• Assignment with goodwill
• Assignment without goodwill

What are the documents required for the Assignment of Trademark?

A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Accordingly, a specific request along with the Trademark Assignment Agreement is required to effect such a change of ownership in respect of the mark at the Trademarks Registry.

What is Licensing of Trademark?

A trademark may be licensed to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act refers to a Licensee as a ‘Registered User’.

Is it necessary to record an assignment with the Trademarks Office?

Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details.

The Trademarks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.

Is it necessary to record a License Agreement with the Trademarks Office?

A trademark is licensed by way of a License Agreement. As per the Trade Mark Act, 1999, contrary to the requirement in case of Assignment, the recordal of the license agreement for permitted use with the Trademark Registrar of a trademark is voluntary and not compulsory. However, it is advisable that the Agreement be registered with the Registrar.

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Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

• Transfer ownership to another entity or party through an "assignment;" or
• Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

Additional information about this page

+2348099223322

[email protected]

ASSIGNMENT AND RECORDING OF TRADEMARK IN NIGERIA

Introduction

In Nigeria, the registration of trademarks is handled by the registry of Trademark, Patent and Design under the commercial division of the Federal Ministry of Industry, Trade and Investment located in Abuja Nigeria.

Trademark is a recognizable name or design that is legally registered and used to identify and represent a product, services or company. A natural (individual) or artificial person (Company) can register a trademark, which consists of an invented name, logo, mark, slogan, and domain name in Nigeria. The registration of a trademark in Nigeria is valid for a period of 7 years subject to renewal every 14 years thereafter.

The law that governs trademark in Nigeria is the Trademark Act 1967. When a trademark is registered, it protects the owner by conferring the exclusive right to use it to identify goods and services from other existing, similar or confusing marks.

Assignment of Trademark

When a trademark has been duly registered in accordance with the normal process of registration,  the owner has the exclusive rights over it, and like any other property one can assign or transfer the ownership of the trademark to another person or entity. The assignment of a trademark can be in respect of the business in total or the particular goods and services covered by that trademark. The Assignor is one who assigns the ownership of trademark to another person or company, while the Assignee is the person who the trademark is assigned to.

A trademark is assigned to the goodwill of the business or not. Where it is assigned with the goodwill, the assignee is to use the trademark in relation to the goods that the assignor previously used them for.

Procedure for Assignment

Section 26 of the Trademarks Act provided for the assignment of a trademark. It states that a registered trademark can be assigned in respect of all goods in which it was registered or some of those goods.

Section 4 of the Act states that the Assignee of a trademark shall not acquire any rights under the assignment until the following requirements have been satisfied:

• Within 6 months from the day of the assignment, the assignee must apply to the registrar for the advertisement of the assignment.
• The assignment must be advertised in the form and manner directed by the Registrar.
• Where the registrar gives direction for advisement, he shall cause a notice of assignment to be published in the trademark journal. The application fee for direction is from N5, 000.00 (Five Thousand Naira).
• The person or entity entered in the register of the trademark as the proprietor of the trademark must give receipts for any consideration of the assignment.
• Where the assignee has become entitled to the trademark by assignment, it shall make an application to the Registrar to register its title on Form 16 and the Registrar on satisfaction on proof of its title shall register him as the proprietor of the trademark in respect of the goods or services which the trademark has an effect. Application fee for registration of Assignment is N15, 000.00 (Fifteen Thousand Naira), which exclude the professional fee of trademark agent or lawyer handling it.
• All particulars of the assignment shall be recorded into the register of trademarks. The assignee or assignor is to file an application for recording his name as the registered proprietor of the mark transferred.
• Note that the decision of the Registrar in respect of this can be appealed to the court.

Unregistered trademarks can also be assigned along with a registered trademark by the proprietor to another person or company provided that the unregistered trademark is used in the same business as a registered trademark; also it is assigned in respect of the same goods for which the registered trademark is being assigned. However, it is greatly advisable that an Assignor should register its entire trademark before assigning it to another.

When does Recording of Trademark Arise?

The assignor or the assignee or an authorised agent of either the assignor or assignee does recording of a trademark. Where an assignment of a trademark is connected with the goodwill associated with the trademark, it should be recorded, for the purpose of the assignee bringing an action for infringement against third parties where necessary.

Documents Required for Assignment or Recording the trademark includes the following:

• The assignee will submit the name, trade and business address and description of the assignee to the Registrar.
• The full particulars of the assignment under which he claims to be entitled to the trademark. The particulars are usually contained in a Deed of Assignment and the deed must be written in the English Language, in the case of foreigners an English translation version of the deed should be provided.
• A copy of the Deed of Assignment will be retained by the Registrar but is not open to public inspection.
• A duly signed power of attorney authorizing an agent or the assignee to record the assigned trademark.

In the Nigerian Jurisdiction, the Trademarks Act 1967 is the relevant Law that governs trademark applications. A mark, logo, device, label or a combination of all these that are distinctive in relation to goods and services can be registered as a trademark.

The proprietor of a mark can assign ownership of the mark to another person or company. The assignment of a trademark can be in respect to the particular goods which the assignee is expected to carry on its goodwill, or it can be transferred to be used for any other goods or services.

The above procedure as provided by the Act must be complied with and it is advisable for the Assignee by virtue of the assignment to record its title in the register to prevent infringement of the title by a third party and for the purpose of validity.

Written by Trademark & Intellectual Property Law at Resolution Law Firm, Nigeria

Email: [email protected]

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