deed of assignment from bank

Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
Date : The date on which the deed is executed should be clearly mentioned.
Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment.

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y.

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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Deed of Assignment: Everything You Need to Know

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. 3 min read updated on January 01, 2024

Updated October 8,2020:

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. It states that a specific piece of property will belong to the assignee and no longer belong to the assignor starting from a specified date. In order to be valid, a deed of assignment must contain certain types of information and meet a number of requirements.

What Is an Assignment?

An assignment is similar to an outright transfer, but it is slightly different. It takes place when one of two parties who have entered into a contract decides to transfer all of his or her rights and obligations to a third party and completely remove himself or herself from the contract.

Also called the assignee, the third party effectively replaces the former contracting party and consequently assumes all of his or her rights and obligations. Unless it is stated in the original contract, both parties to the initial contract are typically required to express approval of an assignment before it can occur. When you sell a piece of property, you are making an assignment of it to the buyer through the paperwork you sign at closing.

What Is a Deed of Assignment?

A deed of assignment refers to a legal document that facilitates the legal transfer of ownership of real estate property. It is an important document that must be securely stored at all times, especially in the case of real estate.

In general, this document can be described as a document that is drafted and signed to promise or guarantee the transfer of ownership of a real estate property on a specified date. In other words, it serves as the evidence of the transfer of ownership of the property, with the stipulation that there is a certain timeframe in which actual ownership will begin.

The deed of assignment is the main document between the seller and buyer that proves ownership in favor of the seller. The party who is transferring his or her rights to the property is known as the “assignor,” while the party who is receiving the rights is called the “assignee.”

A deed of assignment is required in many different situations, the most common of which is the transfer of ownership of a property. For example, a developer of a new house has to sign a deed of assignment with a buyer, stating that the house will belong to him or her on a certain date. Nevertheless, the buyer may want to sell the house to someone else in the future, which will also require the signing of a deed of assignment.

This document is necessary because it serves as a temporary title deed in the event that the actual title deed for the house has not been issued. For every piece of property that will be sold before the issuance of a title deed, a deed of assignment will be required.

Requirements for a Deed of Assignment

In order to be legally enforceable, an absolute sale deed must provide a clear description of the property being transferred, such as its address or other information that distinguishes it from other properties. In addition, it must clearly identify the buyer and seller and state the date when the transfer will become legally effective, the purchase price, and other relevant information.

In today's real estate transactions, contracting parties usually use an ancillary real estate sale contract in an attempt to cram all the required information into a deed. Nonetheless, the information found in the contract must be referenced by the deed.

Information to Include in a Deed of Assignment

Names of parties to the agreement
Addresses of the parties and how they are binding on the parties' successors, friends, and other people who represent them in any capacity
History of the property being transferred, from the time it was first acquired to the time it is about to be sold
Agreed price of the property
Size and description of the property
Promises or covenants the parties will undertake to execute the deed
Signatures of the parties
Section for the Governors Consent or Commissioner of Oaths to sign and verify the agreement

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

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Understanding the Assignment of Mortgages: What You Need To Know

3 minute read • Upsolve is a nonprofit tool that helps you file bankruptcy for free. Think TurboTax for bankruptcy. Get free education, customer support, and community. Featured in Forbes 4x and funded by institutions like Harvard University so we'll never ask you for a credit card. Explore our free tool

A mortgage is a legally binding agreement between a home buyer and a lender that dictates a borrower's ability to pay off a loan. Every mortgage has an interest rate, a term length, and specific fees attached to it.

Written by Attorney Todd Carney . Updated November 26, 2021

If you’re like most people who want to purchase a home, you’ll start by going to a bank or other lender to get a mortgage loan. Though you can choose your lender, after the mortgage loan is processed, your mortgage may be transferred to a different mortgage servicer . A transfer is also called an assignment of the mortgage.

No matter what it’s called, this change of hands may also change who you’re supposed to make your house payments to and how the foreclosure process works if you default on your loan. That’s why if you’re a homeowner, it’s important to know how this process works. This article will provide an in-depth look at what an assignment of a mortgage entails and what impact it can have on homeownership.

Assignment of Mortgage – The Basics

When your original lender transfers your mortgage account and their interests in it to a new lender, that’s called an assignment of mortgage. To do this, your lender must use an assignment of mortgage document. This document ensures the loan is legally transferred to the new owner. It’s common for mortgage lenders to sell the mortgages to other lenders. Most lenders assign the mortgages they originate to other lenders or mortgage buyers.

Home Loan Documents

When you get a loan for a home or real estate, there will usually be two mortgage documents. The first is a mortgage or, less commonly, a deed of trust . The other is a promissory note. The mortgage or deed of trust will state that the mortgaged property provides the security interest for the loan. This basically means that your home is serving as collateral for the loan. It also gives the loan servicer the right to foreclose if you don’t make your monthly payments. The promissory note provides proof of the debt and your promise to pay it.

When a lender assigns your mortgage, your interests as the mortgagor are given to another mortgagee or servicer. Mortgages and deeds of trust are usually recorded in the county recorder’s office. This office also keeps a record of any transfers. When a mortgage is transferred so is the promissory note. The note will be endorsed or signed over to the loan’s new owner. In some situations, a note will be endorsed in blank, which turns it into a bearer instrument. This means whoever holds the note is the presumed owner.

Using MERS To Track Transfers

Banks have collectively established the Mortgage Electronic Registration System , Inc. (MERS), which keeps track of who owns which loans. With MERS, lenders are no longer required to do a separate assignment every time a loan is transferred. That’s because MERS keeps track of the transfers. It’s crucial for MERS to maintain a record of assignments and endorsements because these land records can tell who actually owns the debt and has a legal right to start the foreclosure process.

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Assignment of Mortgage Requirements and Effects

The assignment of mortgage needs to include the following:

The original information regarding the mortgage. Alternatively, it can include the county recorder office’s identification numbers.

The borrower’s name.

The mortgage loan’s original amount.

The date of the mortgage and when it was recorded.

Usually, there will also need to be a legal description of the real property the mortgage secures, but this is determined by state law and differs by state.

Notice Requirements

The original lender doesn’t need to provide notice to or get permission from the homeowner prior to assigning the mortgage. But the new lender (sometimes called the assignee) has to send the homeowner some form of notice of the loan assignment. The document will typically provide a disclaimer about who the new lender is, the lender’s contact information, and information about how to make your mortgage payment. You should make sure you have this information so you can avoid foreclosure.

Mortgage Terms

When an assignment occurs your loan is transferred, but the initial terms of your mortgage will stay the same. This means you’ll have the same interest rate, overall loan amount, monthly payment, and payment due date. If there are changes or adjustments to the escrow account, the new lender must do them under the terms of the original escrow agreement. The new lender can make some changes if you request them and the lender approves. For example, you may request your new lender to provide more payment methods.

Taxes and Insurance

If you have an escrow account and your mortgage is transferred, you may be worried about making sure your property taxes and homeowners insurance get paid. Though you can always verify the information, the original loan servicer is responsible for giving your local tax authority the new loan servicer’s address for tax billing purposes. The original lender is required to do this after the assignment is recorded. The servicer will also reach out to your property insurance company for this reason.

If you’ve received notice that your mortgage loan has been assigned, it’s a good idea to reach out to your loan servicer and verify this information. Verifying that all your mortgage information is correct, that you know who to contact if you have questions about your mortgage, and that you know how to make payments to the new servicer will help you avoid being scammed or making payments incorrectly.

Let's Summarize…

In a mortgage assignment, your original lender or servicer transfers your mortgage account to another loan servicer. When this occurs, the original mortgagee or lender’s interests go to the next lender. Even if your mortgage gets transferred or assigned, your mortgage’s terms should remain the same. Your interest rate, loan amount, monthly payment, and payment schedule shouldn’t change.

Your original lender isn’t required to notify you or get your permission prior to assigning your mortgage. But you should receive correspondence from the new lender after the assignment. It’s important to verify any change in assignment with your original loan servicer before you make your next mortgage payment, so you don’t fall victim to a scam.

Attorney Todd Carney

Attorney Todd Carney is a writer and graduate of Harvard Law School. While in law school, Todd worked in a clinic that helped pro-bono clients file for bankruptcy. Todd also studied several aspects of how the law impacts consumers. Todd has written over 40 articles for sites such... read more about Attorney Todd Carney

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DEED OF ASSIGNMENT: EVERYTHING YOU NEED TO KNOW.

A Deed of Assignment refers to a legal document in which an assignor states his willingness to assign the ownership of his property to the assignee. The Deed of Assignment is required to effect a transfer of property and to show the legal right to possess it. It is always a subject of debate whether Deed of Assignment is a contract; a Deed of Assignment is actually a contract where the owner (the “assignor”) transfers ownership over certain property to another person (the “assignee”) by way of assignment. As a result of the assignment, the assignee steps into the shoes of the assignor and assumes all the rights and obligations pertaining to the property.

In Nigeria, a Deed of Assignment is one of the legal documents that transfer authentic legal ownership in a property. There are several other documents like a deed of gifts, Assent, etc. However, this article focuses on the deed of assignment.

It is the written proof of ownership that stipulates the kind of rights or interests being transferred to the buyer which is a legal interest.

Read Also: DIFFERENCE BETWEEN TRANSFER OF PROPERTY THROUGH WILLS AND DEED OF GIFT

CONTENTS OF A DEED OF ASSIGNMENT

Content of a Deed of Assignment matters a lot to the transaction and special skill is needed for a hitch-free transaction. The contents of a deed of assignment can be divided into 3 namely; the introductory part, the second (usually the operative part), and the concluding part.

THE INTRODUCTORY PART: This part enumerates the preliminary matters such as the commencement date, parties in the transaction, and recitals. The parties mentioned in the deed must be legal persons which can consist of natural persons and entities with corporate personality, the name, address, and status of the parties must be included. The proper descriptions of the parties are the assignor (seller) and assignee (buyer). The Recitals give the material facts constituting the background to the current transaction in chronological order.
THE SECOND PART (USUALLY THE OPERATIVE PART): This is the part where the interest or title in the property is actually transferred from the assignor to the assignee. It is more like the engine room of the deed of assignment. The operative part usually starts with testatum and it provides for other important clauses such as the consideration (price) of the property, the accepted receipt by the assignor, the description of the property, and the terms and conditions of the transaction.
The testimonium : this shows that all the parties are involved in the execution of the deed.
Execution : this means signing. The capacity of the parties (either individual, corporate bodies, illiterates) is of great essence in the mode of execution. It is important to note that the type of parties involved determines how they will sign. Example 2 directors or a director/secretary will sign if a company is involved. In the same way, if an association, couple, individual, illiterate, family land (omonile), firm, unregistered association, etc. is involved the format of signature would be different.
Attestation : this refers to the witnessing of the execution of the deed by witnesses.

For a Deed of Assignment to be effective, it must include a column for the Governor of the state or a representative of the Government where the property is, to sign/consent to the transaction. By virtue of Sec. 22 of the Land Use Act, and Sec. 10 Land Instrument Registration Law, the Governor must consent to the transaction.

Do you have any further questions? feel free to call Ibejulekkilawyer on 08034869295 or send a mail to [email protected] and we shall respond accordingly.

Disclaimer: The above is for information purposes only and should not be construed as legal advice. Ibejulekkilawyer.com (blog) shall not be liable to any person(s) for any damage or liability arising whatsoever following the reliance of the information contained herein. Consult us or your legal practitioner for legal advice.

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Drafting a Deed of Assignment

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Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom. Also note: This is not legal advice.

Introduction

A Deed of Assignment is a vital legal document used to transfer rights, interests or assets between parties. It is regularly used in business transactions, and often regarding real estate or intellectual property. A well-crafted deed of assignment can protect both sides from potential legal disputes, ensuring that everyone involved understands their obligations and responsibilities.

The Genie AI team has seen many instances where having a valid deed of assignment can make all the difference - without it businesses could be exposed to considerable risk. That’s why we offer free templates and step-by-step guides to help those wishing to draft their own deed.

When creating a Deed of Assignment it is important to take the specific circumstances into account - any changes or additions should be accurately documented and agreed by all involved parties beforehand. Furthermore, it is essential that the terms are clearly written out in an unambiguous way so every party knows exactly what they have signed up for. Beyond protecting both sides’ interests, this type of agreement can also be used for copyright assignments, leases, debt transfers and trusts.

Before signing on the dotted line it’s also critical that executing such documentation is done properly - all parties must sign in the presence of a witness who will also affix their signature and date the document accordingly. Once this process has been completed filings must then be made with any relevant government authorities whenever necessary (especially in cases involving real estate or intellectual property transfers).

In summary, drafting a Deed of Assignment not only safeguards everyone’s best interests but also provides additional benefits depending on its use case - reading through our step-by-step guidance below should provide you with more information on how to access our template library today and start benefitting from its advantages without needing to sign up for an account with Genie AI first!

Definitions (feel free to skip)

Legal Binding: When a legally binding document is used, it means that all parties involved are legally obligated to follow the terms and conditions set forth in the document.

Assignor: The assignor is the person who is transferring rights, interests or assets to someone else.

Assignee: The assignee is the person who is receiving the rights, interests or assets from the assignor.

Witness: A witness is an independent third-party who is present when a document is signed, in order to ensure that the process is completed in a secure and legally binding manner.

Stamp: A stamp is an official seal or mark that is used to verify and authenticate a document.

Tax: A tax is a sum of money that is paid to a government or public authority.

Duty: Duty is an obligation or responsibility assigned to someone.

Defining the Deed of Assignment

What is a deed of assignment and what is its purpose, parties involved, who needs to be involved in the making of a deed of assignment, drafting the deed, determine what kind of deed of assignment needs to be drafted, consider the subject matter to be assigned in the deed, research the legal requirements for the kind of deed to be drafted, draft the deed of assignment in accordance with the legal requirements, executing the deed, check that the parties to the deed are correctly identified, confirm that the deed is correctly signed and dated by all parties, confirm that the deed is witnessed by an independent third party, have the deed of assignment properly executed by all parties, registration, determine whether the deed of assignment needs to be registered, if registration is necessary, confirm the registration procedures, take necessary steps to register the deed of assignment, considerations, consider any applicable tax or stamp duty implications of the deed of assignment, consider any restrictions or limitations on the rights being assigned, consider whether the deed of assignment needs to be registered in any public records, common mistakes, not accurately identifying all of the parties to the deed, not having the deed properly executed by all parties, not having the deed witnessed by an independent third party, not considering any applicable tax or stamp duty implications, not considering any applicable restrictions or limitations on the rights being assigned, record keeping, ensure that the original deed of assignment is securely stored, create a digital copy of the deed and store it in a secure manner, review the deed of assignment to ensure accuracy, confirm that all steps have been completed correctly, seek advice from legal professionals if necessary, get started.

Establish the parties involved in the Deed of Assignment
Identify the property or service being assigned
Specify the terms of the assignment
Ensure the Deed of Assignment is properly witnessed
Check that all signatures are valid

When you have completed the steps above, you will have successfully defined the Deed of Assignment and can proceed to the next step.

A deed of assignment is a legal document that is used to transfer the rights and responsibilities of one party (the assignor) to another party (the assignee)
It is used to transfer contractual rights and obligations between parties
It should include information such as the names of the parties, the date of the assignment, and the description of the rights transferred
You will know that you have completed this step when you have an understanding of what a deed of assignment is and why it is used.
Identify the party transferring their rights (the assignor) and the party receiving the rights (the assignee)
Draft the deed in the name of both parties, including full names and contact details
Ensure the deed is signed by both the assignor and assignee
Once the deed is signed, the parties should exchange copies of the document

Once the assignor and assignee have been identified and the deed has been drafted and signed, you can check this step off your list and move on to the next step.

Identify the parties involved in the Deed of Assignment. This would typically include the assignor (the party transferring their rights or interest) and the assignee (the party receiving the rights or interest).
Ensure that all parties involved have the legal capacity to enter into a contract.
When all parties have been identified and their legal capacity has been verified, you can check this step off your list and move on to drafting the Deed.
Read the applicable laws in your jurisdiction to determine the required language and structure of the Deed of Assignment
Gather the necessary information on the parties, the asset being assigned, and other relevant details
Draft the Deed of Assignment, taking into account all the necessary details
Make sure the language is clear and unambiguous
Have the Deed of Assignment reviewed by a legal professional
When the Deed of Assignment has been drafted and reviewed, you can move on to the next step.
Identify the type of assignment that needs to be drafted and the legal requirements that need to be satisfied
Consider the purpose of the Deed and the rights and obligations of the parties to the Deed
Determine if the Deed is for an absolute or conditional assignment
Consider if the Deed should be an express or implied assignment
Determine if the Deed needs to be in writing or if it can be oral
Check the applicable laws in your jurisdiction to ensure that you are drafting a valid Deed
Check if there are any additional requirements that need to be included in the Deed

When you can check this off your list: Once you have identified the type of assignment and the relevant legal requirements, you can move on to considering the subject matter to be assigned in the Deed.

Identify the subject matter of the Deed of Assignment, such as a patent, trademark, copyright, or other intellectual property
Assess the value of the subject matter and any associated liabilities
Understand the relationship between the assignor and assignee
Have all necessary documents, such as a purchase agreement, to provide more detail about the assignment

Once you have identified the subject matter of the Deed of Assignment, assessed its value, understand the relationship between the assignor and assignee, and gathered any additional documents, you can move onto the next step of researching the legal requirements for the kind of Deed to be drafted.

Research the relevant legislation, case law, and other materials related to the Deed of Assignment to be drafted
Consult with a lawyer familiar with the relevant law to understand the requirements
Take detailed notes on the legal requirements that must be adhered to in the Deed of Assignment
Once you have all the necessary information, double-check that you understand the requirements before moving on to the next step.
Prepare the text of the Deed, ensuring that all relevant information regarding the parties, the subject matter, and the consideration is included
Check to make sure the language conforms with relevant laws and regulations
Have the Deed reviewed by a solicitor to ensure that it complies with all legal requirements
Once the Deed has been approved by a solicitor, have the parties sign the document
Once the Deed has been signed by both parties, make multiple copies and ensure each party has a copy
This step is complete once the Deed has been signed and each party has a copy of the document.
Ensure both parties sign the Deed of Assignment in the presence of two witnesses who are over the age of 18 and not parties to the Deed
Have both parties sign the deed in the presence of two witnesses and have the witnesses sign the deed to attest to witnessing the signature of the parties
Check that the parties have signed the Deed in the presence of the witnesses by noting the signatures and the dates of signature in the execution clause of the Deed
Once the Deed has been executed, have the parties date and keep a copy of the Deed in a secure place
You will know that you have completed this step when the Deed has been properly executed by the parties in the presence of two witnesses.
Identify all parties to the Deed and verify that their details are correct.
Ensure that all parties to the Deed are identified in the document and that the details of each party are accurate and up-to-date.
Check that the names, addresses and contact details of each party are correct.
Once you have verified that the parties and their details are correctly identified, you can move on to the next step.
Check that all parties have signed the Deed in the correct place, and that the date of signature is correct
Ensure that each party has signed the Deed in the presence of an independent witness
Check that all parties have signed the Deed with their full name and title, if applicable
Confirm that the date of signature is correct and that all parties have signed on the same date
Once you have verified that all parties have correctly signed and dated the Deed, you can proceed to the next step.
Ensure that the Deed is witnessed by an independent third party who is not a party to the Deed.
Ask the third party to sign the Deed and provide their name, address, occupation and date of signing.
Check that the third party has signed and dated the Deed.
Once the above is complete, you can check this step off your list and move on to the next step.
Obtain signatures from all parties on the deed of assignment, ensuring that each party signs in the presence of a witness
Have an independent third party witness each party’s signature
Ensure that all parties have a valid form of identification, such as a driver’s license or passport, available for inspection by the witness
Ensure that all parties sign the deed of assignment in the presence of the witness
Obtain the witness’ signature, confirming that all parties signed in the presence of the witness
You will know this step is completed once all parties have signed the deed of assignment and the witness has signed confirming they were present during the signing.
Obtain a copy of the executed Deed of Assignment from all parties
Contact the relevant state or territory office to determine whether the Deed of Assignment needs to be registered
If registration is required, complete the necessary forms, pay the registration fee, and submit the required documents
Once the Deed of Assignment is registered, the registrar will issue a certificate of registration
Check off this step when you have received and reviewed the certificate of registration.
Research the applicable laws and regulations in the relevant jurisdiction to decide if the Deed of Assignment needs to be registered
Consult a legal professional if unsure
When you have the answer, you can move on to the next step.
Confirm what type of Deed of Assignment requires registration with the relevant government agency or registry.
Research the registration procedures and the requirements you must meet in order to register the Deed of Assignment.
Obtain any fees or additional documents that are necessary to complete the registration process.
Ensure that all parties to the Deed of Assignment understand the registration process and the requirements for completing it.

You can check off this step once you have researched and confirmed the registration procedures for the Deed of Assignment.

Gather the necessary documents for registration, such as the Deed of Assignment, supporting documents, and the applicable fee
Visit the registration office to register the Deed of Assignment
Submit the necessary documents to the registration office
Pay the applicable fee
Obtain a copy of the registered Deed of Assignment
Upon completion of the above steps, you can check this off your list and move on to the next step.
Review and understand the nature of the rights and obligations being assigned
Determine if there are any restrictions or limitations in the assignment
Assess if any approvals are needed from third parties before the assignment is valid
Confirm that the assignor has the right to assign the interest being transferred
Check to see if the assignee has the necessary capacity to accept the assignment
Analyze if the assignment is subject to any applicable laws or regulations
Determine if any additional documentation is needed to support the assignment
Once you have considered all of the above, you can proceed with drafting the Deed of Assignment.
Check with your local taxation authority or a qualified tax professional to see if the Deed of Assignment is subject to any taxes or stamp duty.
Ensure that the Deed of Assignment includes any required taxes or stamp duty payments.
Check to see if the tax or stamp duty implications vary by jurisdiction.
Once you’ve considered the tax or stamp duty implications, you can move on to the next step.
Identify any restrictions or limitations that could affect the transfer of rights in the Deed of Assignment
Consider whether there are any legal restrictions that must be observed in the transfer of the rights being assigned
Research any relevant industry standards or regulations to ensure that the restrictions or limitations on the rights being assigned are compliant
Ensure that the Deed of Assignment clearly outlines the restrictions or limitations of the rights being assigned
When all restrictions or limitations on the rights being assigned are taken into consideration, checked for compliance and outlined in the Deed of Assignment, this step is complete.
Consider whether the Deed of Assignment needs to be registered with any government or public agencies.
Determine if any registration is required or optional.
Research the relevant regulations and laws to ensure that the assignments are properly recorded.
Check any local requirements or restrictions.
Once you have determined that the Deed of Assignment does or does not need to be registered, you can move on to the next step in the process.

• Read over the Deed of Assignment twice to make sure you’re accurately identifying all of the parties to the Deed. Make sure you include the full names and addresses of the assignor and assignee, as well as any other relevant parties. • Check that the legal description of the subject property is accurate. • Ensure that the consideration (the amount being exchanged for the assignment) is stated clearly and accurately. • Make sure that the names of the initial parties to the Deed are also included in the recitals. • Ensure that the recitals and the express terms of the Deed are consistent with one another. • Make sure that the Deed is signed, notarized, and delivered in accordance with state law.

Once you’ve completed the above steps, you can check off this task and move on to the next step in the guide.

Identify the assignor and assignee. The assignor is the party transferring their rights and the assignee is the party receiving the rights.
Check all of the details are correct. This includes the names, addresses and other contact information for both parties.
Draft the deed to ensure that the assignor and assignee are accurately identified.
You can check this off your list and move on to the next step once you have confirmed that the assignor and assignee have been accurately identified in the deed.
Ensure that all parties to the Deed have read, understood and agreed to the terms and conditions of the agreement.
Have all parties affix their signature to the Deed and the accompanying documents.
Check that all the signatures are dated and in the presence of a witness.
When all parties have properly executed the Deed, you can move on to the next step.
Ensure all parties have signed the Deed in the presence of a witness.
The witness must be an independent third party who is not a party to the Deed.
The witness must sign each page of the Deed that contains a party’s signature.
The witness must also include their full name, address and occupation on the Deed.
Once all of the above requirements are met, then you can check this off your list and move on to the next step.
Determine the applicable taxes or stamp duty implications for the Deed of Assignment.
Research any applicable taxes or stamp duty fees for the Deed of Assignment.
Calculate the applicable taxes or stamp duty fees for the Deed of Assignment.
Make sure to include the applicable taxes or stamp duty fees in the Deed of Assignment.

Once you have determined the applicable taxes or stamp duty implications for the Deed of Assignment, and included them in the Deed of Assignment, you can move on to the next step.

Determine the rights that you are assigning and review any applicable laws or regulations to ensure that the assignment of such rights is permitted.
Consider any applicable contractual restrictions or limitations on the rights being assigned, such as any applicable confidentiality obligations or restrictions on the transfer of rights.
Once you have determined that the assignment of the rights is permitted and there are no applicable restrictions or limitations, you can proceed to the next step of recording keeping.
Create a record of the Deed of Assignment, including the date it was executed, by each party
Maintain a copy of the Deed of Assignment in a secure place
Record any additional related documents, such as any security documents, release documents, or other agreements
When all of the above have been done, you can check this off your list and move on to the next step.
Obtain a physical copy of the original Deed of Assignment
Ensure the original Deed is signed by both parties
Keep the original Deed in a safe and secure place, such as a locked filing cabinet or safe
Make sure the document is stored in a location that is accessible to both parties
Ensure that the original Deed is not destroyed or tampered with in any way

You can check this off your list and move on to the next step once the original Deed of Assignment is safely stored in a secure location.

Scan or take a digital photo of the original Deed of Assignment and save it to a secure location.
Ensure that the digital copy is readable and clearly displays all of the information contained in the original document.
Ensure that the digital copy is stored in a secure location, preferably on a cloud-based storage system or other secure server.
Make sure that only authorized personnel have access to the digital copy of the Deed.
When finished, you will have created a digital copy of the Deed and stored it in a secure manner.
Read over the Deed of Assignment to ensure accuracy
Make sure all details are correct, and all parties are named
Verify that all signatures are complete and accurate
Make sure the date of the assignment is correct
Check that the document is formatted and laid out correctly
Once you are satisfied with the accuracy of the Deed of Assignment, you can move on to the next step.
Read through the entire document to make sure all the information is correct
Double check that the names and details of the parties involved are spelled correctly
Ensure that all the dates are accurate, and that any and all parties have signed the deed in the right places
Check that the terms and conditions in the deed are consistent with the agreement between the parties
When you have verified all the details, you can check this off your list and move on to the next step.
Check the Deed of Assignment to ensure that all required elements are present, including accurate information and signatures of all parties.
Verify that any and all attachments to the Deed of Assignment are included and accurate.
Ensure that all dates, signatures, and other pieces of information are accurate and up-to-date.
Once you’ve confirmed that all of the steps have been completed correctly, you can move on to the next step.
Seek professional advice from a lawyer or other legal professional to ensure that the deed of assignment is legally binding and enforceable.
Request that the legal professional checks that all steps have been completed correctly, and that the deed of assignment meets all requirements under local law.
Ask the legal professional to provide you with written advice on any changes or revisions that may be necessary to make the deed of assignment valid and enforceable.
Once the legal professional has confirmed that the deed is legally sound, you can check off this step and proceed with the next one.
Research legal professionals who are able to provide advice and assistance with the drafting of a deed of assignment
Contact the legal professionals to discuss the specific requirements and details of the deed of assignment
Ask the legal professionals if they are able to provide advice and assistance with the deed of assignment
Receive advice from the legal professionals and make changes to the deed of assignment accordingly
Once you are satisfied with the changes to the deed of assignment, you can move on to the next step.

Q: Does a Deed of Assignment need to be signed?

Asked by John on April 23rd 2022. A: Yes, a Deed of Assignment needs to be signed by both the assignor and the assignee in order for it to be legally binding. The signatures should be witnessed and dated, and should be in front of an independent witness who is not related to either party. It is also important to include the relevant clauses and provisions in the deed, as these will set out the rights and obligations of each party.

Q: What is the difference between an assignment and a novation?

Asked by Sarah on July 29th 2022. A: An assignment is a transfer of rights or obligations from one party to another, while a novation is a transfer of rights or obligations from one party to another with the consent of all parties involved. An assignment does not necessarily require the consent of all parties, while a novation always requires the consent of all parties. Additionally, an assignment can transfer rights or obligations without necessarily extinguishing any pre-existing agreements, while a novation extinguishes any pre-existing agreements.

Q: Is a Deed of Assignment legally binding in different jurisdictions?

Asked by Tyler on October 17th 2022. A: Yes, a Deed of Assignment can be legally binding in different jurisdictions, though the exact requirements for validity may differ from jurisdiction to jurisdiction. In general, however, a Deed of Assignment needs to be signed by both parties and witnessed by an independent third party in order for it to be legally binding. Additionally, the deed should include all relevant clauses and provisions that are applicable in each jurisdiction.

Q: Are there any tax implications when drafting a Deed of Assignment?

Asked by Emma on January 15th 2022. A: Yes, there are tax implications that need to be taken into account when drafting a Deed of Assignment. Depending on the jurisdiction and specific tax laws, there may be tax implications for both parties if they are transferring rights or obligations under the deed. It is important to seek professional tax advice before entering into any agreement that involves transferring rights or obligations between parties as this could have significant financial implications for all involved.

Q: Do I need legal advice when drafting a Deed of Assignment?

Asked by Jacob on June 5th 2022. A: While it is not necessary to seek legal advice when drafting a Deed of Assignment, it is generally recommended in order to ensure that all relevant legal requirements are satisfied and that all involved parties are aware of their rights and obligations under the deed. It is also important to make sure that all language used in the deed is clear and unambiguous so that it can easily be understood by all parties involved.

Q: How can I ensure that my Deed of Assignment is valid?

Asked by Michael on August 28th 2022. A: In order for your Deed of Assignment to be valid, it must meet certain legal requirements which vary between jurisdictions. Generally speaking, your deed should include all relevant clauses and provisions applicable in your jurisdiction as well as signatures from both parties which should be witnessed by an independent third party who is not related to either party involved. Additionally, any language used within the document should be clear and unambiguous so that it can easily be understood by all involved parties.

Q: What information do I need to provide when drafting a Deed of Assignment?

Asked by Ashley on November 10th 2022. A: When drafting a Deed of Assignment, you will need to provide information about both parties involved such as their names, addresses, contact details and any other relevant information required under applicable laws in your jurisdiction. Additionally, you will need to include any relevant clauses or provisions applicable in your jurisdiction which will set out the rights and obligations of each party under the deed as well as any other information required for the document to be legally binding.

Q: What are common mistakes made when drafting a Deed of Assignment?

Asked by Joshua on February 20th 2022. A: One common mistake made when drafting a Deed of Assignment is failing to include all relevant clauses or provisions applicable in your jurisdiction which set out the rights and obligations of each party involved in the agreement. Additionally, failing to have the document signed by both parties or witnessed by an independent third party can render the document invalid or unenforceable under applicable law in some jurisdictions. Moreover, using ambiguous language within the document can also lead to misunderstandings and disputes further down the line which could be avoided if clear language was used throughout the document instead.

Example dispute

Lawsuit referencing a deed of assignment.

The plaintiff may raise a lawsuit if they have been wronged by the defendant in a way that is outlined in the deed of assignment.
For example, the deed of assignment may outline that the defendant is responsible for paying a certain amount of money to the plaintiff, and the defendant has failed to do so.
The plaintiff may also raise a lawsuit if the defendant has failed to adhere to any other obligations laid out in the deed of assignment.
The plaintiff would need to prove that the defendant has breached the deed of assignment in order to win the lawsuit.
If successful, the plaintiff may be able to obtain a judgment in their favor, which may require the defendant to pay the plaintiff the money they are owed.
In addition, the plaintiff may be able to seek other damages, such as punitive damages, if the breach of the deed of assignment was particularly egregious.
Depending on the severity of the breach, the plaintiff may also be able to seek an injunction to prevent the defendant from continuing to breach the deed of assignment.
Settlement of the dispute may also be possible, wherein the defendant agrees to pay a certain amount of money to the plaintiff, or agrees to adhere to the obligations laid out in the deed of assignment.

Templates available (free to use)

Deed Of Assignment For Rent Deposits Occupation Lease Deed Of Assignment Of Benefit Of Claim For The Freehold Or Extended Lease House Under Section 8 Or Section 14 Deed Of Assignment Of Equitable Interest In Residential Land Deed Of Assignment Of Goodwill And Intellectual Property Rights Transfer Of A General Partnership To An Llp Deed Of Assignment Of Property Sale Benefits [Section 42 Deed Of A

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Corporate Debt

Debt Assignment: How They Work, Considerations and Benefits

Daniel Liberto is a journalist with over 10 years of experience working with publications such as the Financial Times, The Independent, and Investors Chronicle.

Charlene Rhinehart is a CPA , CFE, chair of an Illinois CPA Society committee, and has a degree in accounting and finance from DePaul University.

Katrina Ávila Munichiello is an experienced editor, writer, fact-checker, and proofreader with more than fourteen years of experience working with print and online publications.

Investopedia / Ryan Oakley

What Is Debt Assignment?

The term debt assignment refers to a transfer of debt , and all the associated rights and obligations, from a creditor to a third party. The assignment is a legal transfer to the other party, who then becomes the owner of the debt. In most cases, a debt assignment is issued to a debt collector who then assumes responsibility to collect the debt.

Key Takeaways

Debt assignment is a transfer of debt, and all the associated rights and obligations, from a creditor to a third party (often a debt collector).
The company assigning the debt may do so to improve its liquidity and/or to reduce its risk exposure.
The debtor must be notified when a debt is assigned so they know who to make payments to and where to send them.
Third-party debt collectors are subject to the Fair Debt Collection Practices Act (FDCPA), a federal law overseen by the Federal Trade Commission (FTC).

How Debt Assignments Work

When a creditor lends an individual or business money, it does so with the confidence that the capital it lends out—as well as the interest payments charged for the privilege—is repaid in a timely fashion. The lender , or the extender of credit , will wait to recoup all the money owed according to the conditions and timeframe laid out in the contract.

In certain circumstances, the lender may decide it no longer wants to be responsible for servicing the loan and opt to sell the debt to a third party instead. Should that happen, a Notice of Assignment (NOA) is sent out to the debtor , the recipient of the loan, informing them that somebody else is now responsible for collecting any outstanding amount. This is referred to as a debt assignment.

The debtor must be notified when a debt is assigned to a third party so that they know who to make payments to and where to send them. If the debtor sends payments to the old creditor after the debt has been assigned, it is likely that the payments will not be accepted. This could cause the debtor to unintentionally default.

When a debtor receives such a notice, it's also generally a good idea for them to verify that the new creditor has recorded the correct total balance and monthly payment for the debt owed. In some cases, the new owner of the debt might even want to propose changes to the original terms of the loan. Should this path be pursued, the creditor is obligated to immediately notify the debtor and give them adequate time to respond.

The debtor still maintains the same legal rights and protections held with the original creditor after a debt assignment.

Special Considerations

Third-party debt collectors are subject to the Fair Debt Collection Practices Act (FDCPA). The FDCPA, a federal law overseen by the Federal Trade Commission (FTC), restricts the means and methods by which third-party debt collectors can contact debtors, the time of day they can make contact, and the number of times they are allowed to call debtors.

If the FDCPA is violated, a debtor may be able to file suit against the debt collection company and the individual debt collector for damages and attorney fees within one year. The terms of the FDCPA are available for review on the FTC's website .

Benefits of Debt Assignment

There are several reasons why a creditor may decide to assign its debt to someone else. This option is often exercised to improve liquidity and/or to reduce risk exposure. A lender may be urgently in need of a quick injection of capital. Alternatively, it might have accumulated lots of high-risk loans and be wary that many of them could default . In cases like these, creditors may be willing to get rid of them swiftly for pennies on the dollar if it means improving their financial outlook and appeasing worried investors. At other times, the creditor may decide the debt is too old to waste its resources on collections, or selling or assigning it to a third party to pick up the collection activity. In these instances, a company would not assign their debt to a third party.

Criticism of Debt Assignment

The process of assigning debt has drawn a fair bit of criticism, especially over the past few decades. Debt buyers have been accused of engaging in all kinds of unethical practices to get paid, including issuing threats and regularly harassing debtors. In some cases, they have also been charged with chasing up debts that have already been settled.

Federal Trade Commission. " Fair Debt Collection Practices Act ." Accessed June 29, 2021.

Federal Trade Commission. " Debt Collection FAQs ." Accessed June 29, 2021.

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The Legally Invalid Assignment Defense to Foreclosure

People who are facing the possibility of a foreclosure on their home may want to investigate the history of their mortgage. If the assignment to the foreclosing party is not valid, this may be a viable defense to a foreclosure. In some states, you can demand that the foreclosing party produce a written assignment of the mortgage. If it does not have an assignment or failed to record it as required by state law, this may result in the dismissal of the foreclosure action. Recording rules may require that the foreclosing party record the assignment before starting the foreclosure.

Courts in other states are more lenient in their review of assignments. Since the mortgage is closely associated with the promissory note, the foreclosing party may be allowed to enforce the promissory note even if it cannot produce a valid assignment of the mortgage. You should seek legal guidance in your state to determine whether this defense may be viable.

Homeowners who believe that they may have a defense based on an invalid assignment may wish to consult with a knowledgeable foreclosure lawyer, since this defense can become complicated. Justia offers a lawyer directory to simplify researching, comparing, and contacting attorneys who fit your legal needs.

The Relationship Between Mortgages and Promissory Notes

The mortgage and the promissory note are the two key documents attached to a loan for buying a home. Some purchases involve a deed of trust rather than a mortgage, but they are functionally equivalent in this context. While the promissory note is your guarantee to repay the loan, the mortgage gives the lender the right to foreclose if you do not repay the loan as arranged. The mortgage also identifies the property that will serve as security for the loan. Thus, the two documents work together in establishing the lender’s rights.

The Role of Mortgage Assignments in Loan Transfers

A bank or other lender often will sell a mortgage to another party, which will collect payments and pursue the homeowner if they fail to keep up with the mortgage. To transfer the loan, the original lender will endorse the promissory note to the new owner of the mortgage. This is because collection efforts hinge on owning the promissory note. If the foreclosing party cannot produce the promissory note, the homeowner will have a defense to the foreclosure.

Meanwhile, the new owner will record the assignment of the mortgage. This includes transferring the right to foreclose, as provided by the mortgage, to the new owner. The assignment will provide the amount of the mortgage and the names of the homeowner, the original lender, and the new owner of the mortgage. It also will contain a description of the property attached to the mortgage and the date when the mortgage took effect.

An invalid assignment defense may only be a temporary solution until the new owner records an assignment in their name.

The mortgage industry uses a tool known as the Mortgage Electronic Registration System (MERS) to keep track of assignments. MERS may be a nominee for the lender, or it may receive the mortgage as an assignment. If MERS is the current assignee, it cannot pursue a foreclosure because it does not have an interest in the promissory note. MERS simply serves as an agent for the current owner of the mortgage and assists in creating a record for transfers of the mortgage. This allows banks to more easily transfer loans among them without creating a new assignment each time. You may have a defense against a foreclosure action if MERS is listed as the owner of the mortgage. However, this likely will be only a temporary solution until the new owner records an assignment in their name.

Last reviewed October 2023

Foreclosure Law Center Contents

Foreclosure Law Center
Errors and Abuses by Mortgage Servicers & Your Legal Rights
Foreclosure Trustees & Their Legal Obligations
Strict Foreclosure Laws
Expedited Foreclosure Laws & Procedures
Tax Debt Leading to Foreclosure & Legal Concerns
Homeowners' Association Liens Leading to Foreclosure & Other Legal Concerns
Timeshare Foreclosures & the Legal Process
Investment Property Foreclosures & Your Legal Options
Manufactured Home Foreclosures & Relevant Legal Concerns
The Right of Redemption Before and After a Foreclosure Sale Under the Law
Reinstatement and Payoff to Prevent Foreclosure & Your Legal Rights
Fannie Mae and Freddie Mac Foreclosure Prevention Strategies
Divorce and Foreclosure Prevention — Legal & Practical Considerations
Natural Disasters and Legal Options for Foreclosure Prevention
Federal Mortgage Servicing Laws Protecting Homeowners
Fighting a Foreclosure — Legal Options and Issues
Homeowners' Legal Rights Before, During, and After Foreclosure
How Liens and Second Mortgages May Legally Affect Foreclosure
Foreclosure Scams — Legal Concerns & Consumer Protections
Judicial vs. Non-Judicial Foreclosure Under the Law
Fighting a Foreclosure in Court & Legal Strategies
Delaying a Foreclosure
The Statute of Limitations Defense Under Foreclosure Law
Using the Legally Defective Affidavit or Declaration Defense to Foreclosure
Setting Aside a Foreclosure Sale
Challenging Fees in Foreclosure
Mortgage Servicing Rules, the FDCPA, and Your Legal Rights
Working With a Foreclosure Lawyer
Alternatives to Foreclosure — Legal & Financial Considerations
Foreclosure Laws and Procedures: 50-State Survey
Foreclosure Law FAQs for Consumers
Find a Foreclosure Defense Lawyer

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Assignment Of Loan

Jump to section, what is an assignment of loan.

Under an assignment of loan, a lender (the assignor) assigns its rights relating to a loan agreement to a new lender (the assignee). Only the assignor's rights under the loan agreement are assigned. The assignor will still have to perform any obligations it has under the facility agreement.

The debtor, the recipient of the loan, must be notified when a debt is assigned. When there is an assignment of a loan, a Notice of Assignment (NOA) is sent out to the debtor informing them that a new party is now responsible for collecting any outstanding amount.

Assignment Of Loan Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.14 5 dex1014.htm ASSIGNMENT OF LOAN DOCUMENTS , Viewed October 21, 2021, View Source on SEC .

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Ayelet G. Faerman knows what influencers mean to brands today. With experience as legal counsel for a beauty brand for over 5 years, and overseeing multiple collaborations, Ayelet has experienced the rise of influencer marketing. As the founder and managing partner of Faerman Law, PA her practice focuses on influencer relations including a specialization in contract negotiations.

Melissa D. Goolsarran Ramnauth, Esq. is an experienced trial-winning trademark and business attorney. She has represented large businesses in commercial litigation cases. She now represents consumers and small businesses regarding federal trademarks, contracts, and more. Her extensive litigation knowledge allows her to prepare strong trademark applications and contracts to minimize the risk of future lawsuits.

Ryan A. Webber focuses his practice primarily on Estate Planning, Elder Law, and Life Care Planning. His clients range from young families concerned about protecting their family as well as aging individuals. Ryan provides Estate Planning, Trust Planning, Special Needs Planning, Public Benefit Planning, and Estate Administration. Ryan focuses on the holistic approach to the practice of elder law which seeks to ensure clients are receiving good care when needed and that they preserve enough assets with which to pay for such care. Many families and individuals also come to Ryan for preparation of their wills, power of attorney, and healthcare guidance documents. Additionally, Ryan assists small and medium sized business owners with their organizational and planning needs. From starting or winding down a business, Ryan provides quality business advice.

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Benjamin is an attorney specializing in Business, Intellectual Property, Employment and Real Estate.

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I am a graduate of Cornell University and Rutgers University School of Law—Newark, and have been admitted to the state and federal bars for New Jersey, and have been engaged in the full- or part-time practice of law since my admission to the bar in 1991. My practice centers on civil litigation; wills, trusts, and estates; and ediscovery review and management. I have extensive experience in regulatory compliance in the financial services industry, as well as privacy laws in the U.S. and E.U.

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Deed of Assignment | Assignor | Assignee

Assign your property to another with a "deed of assignment".

Transfer your property to another person

Last updated on 16 November 2023

1. What is a Deed of Assignment?

A Deed of Assignment is a contract where the owner (the “assignor”) transfers ownership over property to another person (the “assignee”) by way of assignment. The assignee steps into the shoes of the assignor and assumes all the rights and obligations to the property.

2. When do you need a Deed of Assignment?

A Deed of Assignment is used when the owner wants to transfer ownership (and the rights and obligations) over property to another person.

3. What information do you need to create the Deed of Assignment?

To create your Deed of Assignment you’ll need the following minimum information:

The type of assignor (e.g. individual or business) as well as name and details (e.g. nationality and address).
The type of assignee (e.g. individual or business) as well as name and details (e.g. nationality and address).
Brief description of the property to be assigned.

4. How much is the document?

The document costs PHP 400 for a one-time purchase. Once purchased you have unlimited use and revisions of this type of document.

You can also avail of Premium subscription at PHP 1,000 and get (a) unlimited use of our growing library of documents (from affidavits to contracts); and (b) unlimited use of our “ Ask an Attorney ” service, which lets you consult an expert lawyer anytime for any legal concern you have.

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The Assignment Of Litigation Rights And Champerty

It is not often that we examine a case involving the doctrine of champerty. The last time we did so was on March 8, 2023 ( here ). We also examined the champerty doctrine in 2021 ( here ), 2020 ( here ), and 2016 ( here ).

Today, we examine the champerty doctrine in our discussion of IKB Intl. S.A. v. Morgan Stanley , 2024 N.Y. Slip Op. 01675 (1st Dept. Mar. 26, 2024) ( here ).

Champerty is the prohibited practice of purchasing claims for the purpose of commencing litigation. It has been described as “a venerable doctrine developed hundreds of years ago to prevent or curtail the commercialization of or trading in litigation.” 1

The doctrine of champerty is codified in New York within Judiciary Law § 489. 2 Under Judiciary Law § 489, no corporation “shall solicit, buy or take an assignment of … a bond, promissory note, bill of exchange, book debt, or other thing in action, or any claim or demand, with the intent and for the purpose of bringing an action or proceeding thereon.” However, for an assignment of a claim to be void for champerty, the assignee must have made the purchase “for the very purpose of bringing such suit” to the “exclusion of any other purpose.” 3 Thus, while assignments “for the primary purpose of obtaining costs or [harassment]” are void as champertous, 4 assignments are not champertous where the intent to bring a suit is merely “incidental and contingent” to other rights. 5

Moreover, champerty does not apply where the assignee had a “preexisting proprietary interest” in the subject matter. 6

IKB began in the years immediately prior to the financial crisis of 2007-2008. Plaintiff IKB International S.A. (“IKB S.A.”) was a commercial bank incorporated in Luxembourg.

IKB S.A. purchased a number of certificates (“Certificates”) for residential mortgage-backed securities from Morgan Stanley, allegedly in reliance on misrepresentations that Morgan Stanley made in its offering documents. In particular, Morgan Stanley allegedly made misrepresentations to IKB S.A.’s investment managers, Standish Mellon and BlackRock, including misrepresentations regarding loan-to-value and combined loan-to-value statistics, owner-occupancy status of borrowers, and adherence to the originators’ underwriting guidelines. The contemporary value of the Certificates collapsed during the onset of the financial crisis as the poor quality of the underlying loans and resulting increased credit risk became apparent. Ultimately, IKB S.A. was placed into liquidation as part of the German government’s bailout of IKB S.A.’s parent, IKB A.G.

In November 2008, IKB S.A. sold the Certificates to IKB A.G. Two weeks later, IKB A.G. sold the Certificates to Rio Debt Holdings (Ireland) Limited (“Rio”), a newly created Irish special purpose vehicle. As part of the sale of Certificates to Rio, IKB A.G. became a junior lender to Rio and also became a portfolio administrator to Rio.

IKB A.G. and Rio subsequently executed an assignment on May 9, 2012 (the “2012 Assignment”) in which Rio assigned to IKB A.G. “all the rights of action and claims against any other party with respect to the Securities it may have obtained in connection with its purchase of the Securities from IKB Deutsche Industriebank AG … except rights of action and claims for the receipt of interest and principal on the Securities.” In exchange, IKB A.G. agreed to provide to Rio “a sum equal to the proceeds of any recovery stemming from a resolution of claims relating to the Assigned Rights, net of all agreed costs, taxes and expenses, which shall be set out and governed by a separate agreement to be executed by the Parties.”

IKB A.G. maintained that under a supplementary deed (the “Supplementary Deed”) and other governing documents, the parties agreed that 80% of the net litigation proceeds would revert to IKB A.G. Rio and IKB A.G. executed the Supplementary Deed on January 11, 2013—after Plaintiffs filed the summons in the action—but gave it retroactive effect from May 9, 2012.

IKB A.G. filed the summons in November 2012 and later filed the complaint on May 17, 2013. The complaint alleged causes of action for fraud, fraudulent concealment, aiding and abetting fraud, and negligent misrepresentation. Defendants moved to dismiss the complaint, in part for lack of standing, arguing that the 2012 Assignment of the fraud claims back to IKB A.G. was void as champertous. The motion court denied the motion, finding that Defendants had not shown that “IKB AG’s primary or sole purpose [for the assignment] was not to enforce a legitimate claim, or that the claim was not acquired as part of a larger transaction or for leverage in other disputes between the parties.” The motion court determined that IKB A.G.’s intent in the 2012 Assignment was a factual question that required further development of the record. However, the motion court dismissed the causes of action for fraudulent concealment and negligent misrepresentation.

On summary judgment, Defendants again sought dismissal on the basis of champerty. The motion court held that the 2012 Assignment was not champertous “because IKB AG had a preexisting proprietary interest in the subject matter.” The motion court explained that

In order to finance the initial assignment of the Certificates to Rio in 2008, IKB AG and Rio entered into a loan agreement. Pursuant to the 2008 loan agreement between IKB AG and Rio, IKB AG as junior lender was entitled to 80% of the profits from the assets. While Defendants are correct that the loan has since been paid down to one dollar, this does not change the fact that, unlike other champertous assignments, the 2012 Assignment indisputably did not involve a “stranger” to the transaction, but a party with a prior interest. 7

The motion court also held that Defendants “failed to establish that the sole purpose for the 2012 Assignment was to profit off of litigation, to the exclusion of all other purposes.” The motion court explained that “[a]n assignment is not champertous merely because the parties enter into the assignment ‘for the purpose of collecting damages, by means of a lawsuit.’” 8 “Rather,” said the motion court, “there is a key distinction between ‘acquir[ing] a right in order to make money from litigating it [champertous] and … acquir[ing] a right in order to enforce it [not champertous].’” 9

The motion court found that Plaintiffs “provided evidence that they [were] still entitled to 80% of the future cash flows under the 2008 loan agreement with Rio because the loan was not paid off entirely—even though it was paid down almost in its entirety.” “Therefore,” concluded the motion court, “regardless of whether or not the 2012 Assignment’s primary purpose was litigation, Defendants [had] not provided sufficient evidence to establish that the sole purpose, to the exclusion of all other purposes, was to profit off of litigation.” “As such,” said the motion court, “Defendants have failed to establish that the 2012 Assignment is void as champertous.”

The Appellate Division, First Department unanimously affirmed.

As an initial mater, the Court rejected Defendants’ argument (as the Court framed it) that “any assignment of litigation claims — even when fashioned to protect an independent litigation right of the assignee — must necessarily be void,” stating that such a formulation was “not the law.” 10 “Rather,” explained the Court, “the champerty doctrine is intended to prevent opportunistic parties from profiting from litigation claims that otherwise would not have been brought — not preventing the assignment of legitimate claims to a party holding a beneficial interest in those claims to enforce its own rights.” 11 “The critical distinction,” noted the Court, was “‘between acquiring a thing in action in order to obtain costs and acquiring it in order to protect an independent right of the assignee.’” 12

The Court also held that the motion court “correctly found that champerty only prohibits the acquisition of a cause of action by a ‘stranger’ to the underlying dispute.” 13 The Court found that the evidence “establishe[d] that plaintiff IKB Deutsche Industriebank A.G. had an independent interest in pursuing the claims, and was not a stranger to the action.” 14 “IKB A.G. owns 100% of plaintiff IKB International, S.A., the original purchaser of the assets, and was the assignor’s junior lender beginning in November 2008,” said the Court. “Defendants’ reading of Justinian [did] not compel a different result,” concluded the Court. 15

Bluebird Partners, L.P. v. First Fidelity Bank, N.A. , 94 N.Y.2d 726, 729 (2000).
Ehrlich v. Rebco Ins. Exchange, Ltd. , 225 A.D.2d 75, 77 (1st Dept. 1996).
See Richbell Information Servs., Inc. v. Jupiter Partners , 280 A.D.2d 208, 215 (1st Dept. 2001) (citing Moses v.McDivitt , 88 N.Y. 62 (1882)). In Justinian Capital SPC v. WestLB AG, N.Y. Branch , the New York Court of Appeals explained that to “constitute the offense [of champerty] the primary purpose of the purchase must be to enable [one] to bring suit, and the intent to bring a suit must not be merely incidental or contingent.” 28 N.Y.3d 160, 166 (2016) (internal quotation marks omitted).
See 71 Clinton St. Apts. LLC v. 71 Clinton Inc. , 114 A.D.3d 583, 585 (1st Dept. 2014); Trust For the Certificate Holders of Merrill Lynch Mortg. Investors, Inc. v. Love Funding Corp. , 13 N.Y.3d 190, 198 (2009).
New York Chinese TV Programs, Inc. v. U.E. Enterprises, Inc. , 1989 WL 22442, *13 (S.D.N.Y. Mar. 8, 1989).
See Love Funding , 13 N.Y.3d at 198.
Citing Jamaica Public Service Co., Ltd. v. La Interamericana Compania De Seguros Generales S.A. , 262 A.D.2d 73, 74 (1st Dept. 1999); In re Imax Sec. Litig. , 2011 WL 1487090, *6 (S.D.N.Y. Apr. 15, 2011).
Quoting Universal Inv. Advisory SA v. Bakrie Telecom Pte., Ltd. , 154 A.D.3d 171, 180 (1st Dept. 2017).
Quoting id.
Slip Op. at *1.
Id. (citation omitted).
Id. (citing Justinian , 28 N.Y.3d at 167) (internal quotation marks omitted)).

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confirmatory deed of assignment trademark

Understanding a deed of assignment for intellectual property

A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.

Find out more about intellectual property basics

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by Brette Sember, J.D.

Brette Sember, J.D., practiced law in New York, including divorce, mediation, family law, adoption, probate and estat...

Understanding intellectual property in business

How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.

Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.

Illustrations and graphics surrounding the words "Intellectual Property"

A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.

Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.

Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.

A deed of assignment must be in writing and should include:

The names and addresses of the assignor and assignee
A description of the program or product for which the rights are being transferred
A statement that all intellectual property rights to the property are being transferred
Signatures of the parties and the date of the agreement execution

The deed could also include the following sections, where applicable:

Consideration, or payment, to be made to the original owner.
Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.

Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.

For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.

Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.

If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.

The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .

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Deed of Assignment (for Intellectual Property)

To be legally effective a deed of assignment must contain:

Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
Date : The date on which the deed is executed should be clearly mentioned.
Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment.

Intellectual Property Sales Agreement

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

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Ten Questions about Confirmatory Assignments

1. Depending upon the applicable IP rights and related law of contract of the jurisdiction, to what extent can an unwritten agreement validly assign IP rights? 2. Assuming that an unwritten assigment is valid, what is the evidentiary showing that is required? 3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? 4. Is the evidentiary showing different in connection with establishing the validity of the assignment in the context of a transaction? 5. How can a purchaser receive sufficient comfort about the validity of the assignment, or is it a matter of risk allocation depending upon the positon of the parties? 6. Does the standard of evidence to establish an unwritten assignment differ once again in the context of a court proceeding? 7. Does the standard of evidence to establish an unwritten assignment differ yet again iin the context of taxation? 8. Is a confirmatory assignment a form of ratification? 9. If it not a form of ratification, what is the proper legal characterization for the agreement? 10. In light of all of the foregoing, does the confirmatory assignment confer any benefit to the parties, other evidentiary or substantive?

Ten Questions about Confirmatory Assignments

13 comments:

Confirmatory assignments are frequently used where a written assignment already exists, but the parties do not want to disclose that document because it contains sensitive information (e.g. payments, etc.). In addition, they are often used to confirm an 'automatic' assignment (e.g. from an employee to his/her employer). The latter may be useful, for example, when submitting a US application with UK inventors.

In the United States, this is a statutory question: "Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing." 35 USC Section 261. Your questions are far more interesting as applied to licenses or servitudes more generally. Based on hundreds of years of common law, one would imagine that all personal property, including patents, would require encumbrances to be publicly recorded for them to be enforceable on subsequent purchasers for value without actual notice. In fact, equitable servitudes on personal property were not enforceable at all at common law. As far as I can tell, patents present a unique exception to this history. For that reason I have wondered whether it is fair even to call patents property -- despite their being deemed so by statute. On my view, this is the most underappreciated obstacle to the emergence of a healthy market for patents. Lemley and Myhrvold suggested years ago a solution to the problem -- namely, of requiring the public disclosure of all assignments and licenses. That seems to have gone nowhere thanks to an incomplete understanding by current stakeholders of how such a transition would result in an entirely new market equilibrium, or at least to the general desire for incremental rather than radical changes to the status quo.

Confirmatory assignments are commonly used to record assignments in writing where the commercial terms of an assignment are to remain confidential. I cannot think of many instances where I would be happy to rely on a written confirmation of an unwritten assignment. It is my understanding that in most common law countries an assignment must be in writing for it to be legally effective, otherwise at best your unwritten assignment may only transfer an equitable interest in the relevant IP. A type of assignment document I have occasionally seen and used is the assignment that is both operative and confirmatory. In other words, "I confirm that I assigned, but if that assignment wasn't legally effective for any reason then I hereby assign". It isn't ideal, but sometimes it's the only way to fix a break in the chain of title when you really don’t think you can rely on that unwritten assignment.

3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? Yes, that is possible in certain jurisdictions. At the most you would need a date of assignment and particulars of the assignee and the assignor. The relevant forms necessary to record the assignment are prepared by the agents and signed on behalf of the assignee. Example, Singapore

Rob hit the nail on the head. They are used to simplify matters in circumstances where the parties may have been better to have signed short-form agreemnts. A party will often not want to disclose a document with all of the juicy commercial terms, so a confirmatory assignment may be used. A final (arguably erroneous) use may be where a party has, to settle a matter, assigned a CTM under cover of a letter or unilateral agreement signed only by the owner. In the case of a CTM, the assignment has to be signed by both parties to be valid. Therefore, whilst the mark may be assigned in the head of the previous owner, something more needs to be done to validly assign. Arguably the follow-up is not confirmatory in those circumstances, but I've seen the document that followed described as confirmatory.

Associated with the issue of confirmatory assignments is the issue of assignment documents with a purported "effective date" earlier than the date of execution of the document. In jurisdictions where rights in an application can only be assigned in writing, the writing requirement was then not fulfilled as at the "effective date". This may be particularly important in relation to priority claims.

I have seen such Confirmatory Assignments used as evidence supporting a transfer request before the EPO, but it wasn't my job to question them even though the whole procedure looked quite fishy to me. Once upon a time there was a nice little company A which got gobbled by company B. One year later, company B was in turn purchased lock, stock and barrel by company C. A, B and C were in three different countries. A's European representative kept prosecuting the EP cases, but only bothered to file a transfer request when a given application was just about to mature into a grant, providing in most cases a confirmatory assignment drafted by an US notary public as evidence. The document stated that A's IP was transferred to three entities Ca, Cb and Cc, which are all presumably 100% subsidiaries of C. I infer that the applications are jointly owned by all three companies. The assignment is signed by Ca, Cb and Cc's officers as well as the notary. The document couldn't have been signed by A's officers, since A did not exist anymore at that point. There is no mention whatsoever of company B either , so the document did not describe what actually happened, since A could never have dealt directly with C. The representative's cover letter only requests transfer to company Ca, leaving Cb and Cc out of the picture, and Ca is the only name entered in the EPO's register. I googled up a bit and I found out that B wrote in its ultimate annual that it now owned all of B's IP, and C later stated in its own annual report that B's IP was now located in yet another subsidiary Cd, different from Ca, Cb or Cc. In one case the Umschreibestelle questioned the confirmatory assignment in that in only bore the signature of one of the parties. The representative adamantly replied that the assignment should be taken at face value and that's it. The EPO did not insist, and took down the transfer - in Ca's name only. In one of the applications this examiner was bone-headed enough to be minded to consider a refusal, prompting the representative to file a "divisional" application in order to keep the show going. The weird thing was that the "divisional" was in A's name, even though it no longer existed for years. The new application was eventually abandoned, so all the interesting questions which arose did not need to be answered. From the preceding, I think I'd start kicking and yelling about who actually owns a patent (and thus entitled to initiate action) if I were ever dragged before court in an infringement action where a confirmatory assignment was involved. The standard for proving a transfer of rights appears to be much lower as to the right to transfer of an opposition. A confirmatory assignment may appear a practical shortcut, but it could be a false saving. As to the argument that a confirmatory assignment can keep details secret, I don't think they're worth the risk either. I've seen IP sale contracts accepted as evidence for a transfer before the EPO where more black ink was poured to obscure passages than the CIA ever used when declassifying a document. BTW, one of these contracts involved yet another of C's subsidiries transferring its IP to numbered entities conveniently located in tax flexible territories.

Thanks for all of your great comments. In one off-site communication on the topic yesterday, I suggested that confirmatory assignments are among the "dirty little secrets" of IP practice. She wrote back that in fact they are the "dity little not-so-secrets" of IP. I suspect that we are both right.

Something that does not appear to be widely appreciated is that the box for the date of agreement on EPO Form 1002 is provided for the convenience of the applicant only, there being no requirement in the EPC to provide a date. I have often filed forms with no date where the information was not available, and no objection has ever been raised. I have only seen this explicitly stated in the answer to question 80 in Dr. Günter Gall's classic book for EQE candidates "European & International patent applications: questions and answers" [ISBN 0-85121-555-6; 1989 edition]. Dr Günter Gall was a Director of the EPO and evidently wrote with authority. I have had more knowledgeable inventors query the appropriateness of signing any sort of assignment of rights that he doesn't own because the invention belongs to the employer by virtue of UK law, and have then had to explain the USA [for example] doesn't recognise this aspect of UK law. Such assignments made in respect of a first filing are certainly useful when subsequently filing in the USA if the inventor is no longer contactable or become uncooperative, eg due to imminent redundancy.

Anonymous' knowledgeable inventors have a point, and this has always been my rationale for obtaining confirmatory assignments. It must surely be a fundamental principle that one cannot assign what one does not own, so a written assignment from an employee to an employer that already owns the invention by terms of a contract of employment must surely be void. The problem is not solved by writing the employment contract in such a way as to place the employee under an obligation to assign, because a subsequent assignment to another party, while being a breach of contract, will not necessarily enable the invention to be reclaimed by the employer (see, eg Stanford v Roche 583 F.3d 832 (Fed. Cir. 2009). As I understand it, the US law relating to employee inventions is basically the common law. The issue is not that the USPTO will not recognise that the employer owns the invention, rather it is the specific requirement that the inventor assign the rights reflected in the particular patent application, ie that a suitable assignment cannot be completed until the inventor has the actual filed specification and claims before her. A general assignment of the invention, and all notional future rights, will not suffice for this purpose. However, an assignment of a PCT application designating the US is fine (although it may take a little effort to persuade the USPTO to accept a document that is not in its standard form). An unavailable or uncooperative inventor remains problematic even if you have a suitable assignment document, because the USPTO cannot accept the filed application until it has an inventor's declaration, or a petition has been granted to allow the application to be accepted without the signed declaration. Though not a US attorney, for my sins I have found myself with clients in this situation, and it can be a lot of work to resolve.

"This and the related topic of failure to agree or document assignment of IPRs arise all too frequently. I have been faced with the challenge of "I paid, so I own" throughout my career. Here are 10 thoughts on this topic: 1. No one should believe that the law will come to their rescue if they do not document a written assignment and have it signed by the assignor and the assignee. 2. Assignments of IPRs are a perfect example of lack of global harmonisation. There is huge discrepancy between national laws as to what formalities are required - few require more than a written assignment signed by both parties. 3. The greatest density of disputes is between consultants and the corporations who hire them. The expectation is that IPRs in the "work product" automatically transfer. Big mistake. 4. English law enjoys equity, and can be persuaded to find an intention to assign (aka an equitable assignment). Hoping for this result is a lottery. In other parts of Europe, the odds are worse. 5. The position is not as random within an employee/employer relationship, because generally the first owner is the employer. However, at the edges ("course of employment") it is well worth documenting the position. In this context, do not assume that ownership is the end of the matter. Always think about attribution issues (such as moral rights) and economic reward (for exceptional contribution). 6. Failure to document the IPR position is statistically likely to create a significant commercial issue downstream. I have personally seen IPOs delayed, joint ventures stall and tens of disputes that frustrate and delay commercial exploitation. 7. The consolation prize in an ownership dispute is typically a licence. Within this one word, is a world of pain as the parties debate scope (field of use), term (for a project to perpetual), ambit (exclusive to non-exclusive), not to mention royalty. So whilst ownership is undoubtedly first place, bottom of the class will not get much at all. 8. Banks and investors still struggle to understand and value IPRs in the same way as tangible assets such as property and stock, so they scare easily. If chain of title and ownership is not clear, expect them to have significant concerns in all other areas such as validity and infringement. 9. Joint ownership looks like a good compromise. Normally it isn't. There is no global uniformity on the rights conferred on joint owners - and even within a jurisdiction it's different between the various IPRs. 10. Which means that I'm normally just so relieved to receive a confirmatory assignment, that I seldom have the energy to think about Neil's 10 questions - but now I will!"

Many interesting comments on assignments. Here is a further related issue, perhaps basic compared to a confirmatory assignment under the original fact pattern. Assume the inventor has executed an assignment to her employer for a US provisional patent application that includes assignment of all later applications, using standard language regarding assigning international applications, US, non-US applications. The assignment properly assigns the right to claim priority. Then a PCT application is timely filed that claims priority to this provisional. The PCT application includes new disclosure in the specification, including new examples, and new claims. Is a second assignment needed or does the assignment of the provisional suffice? For all jurisdictions? If a new assignment is needed, how is it worded to avoid the issue of 're-assigning' what has already been assigned in the provisional assignment? Seems one can only assign rights one has not already assigned away.

In answer to the last comment, yes, a new assignment is needed. An assignment has to relate to an invention, and if that invention is new, it cannot have been previously assigned. Equitably, yes, but then we argue over whether the new invention is actually covered.

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Closing and Post-Closing Issues

By Lanning G. Bryer

I. MEANS OF ACQUIRING INTANGIBLE ASSETS II. CONDITIONS TO CLOSING III. CLOSING DOCUMENTS IV. CLOSING DAY V. POST-CLOSING ISSUES VI. CONCLUSION

The deal is virtually done. All that remains is for the parties to “close” the deal. A common definition of a “Closing” date is that date upon which all conditions precedent set forth in an agreement must be satisfied. What seems like a relatively simple and quick process can be anything from short and sweet to long and painful. The three most important skills for the attorney attending a Closing to exercise in order to achieve a successful Closing are anticipation, preparation and organization. If all necessary documents have been prepared and issues anticipated and addressed, the Closing can be seamless. Furthermore, good organization on a complex transaction can make what would be a long, drawn out-process much smoother and more efficient. The following paper identifies and then discusses many of the most common issues to arise during the Closing and post-Closing of a business transaction involving trademark rights.

[1] Lanning G. Bryer, a partner in the New York office of the law firm Ladas & Parry, has written extensively on intellectual property issues. The author acknowledges the assistance of Scott J. Lebson, Esq., an associate in Ladas & Parry’s New York office, in the writing of this paper, which was first presented by Mr. Bryer at the INTA’s Trademarks in Business Transactions Forum in New York City, February 25-26, 2002. Mr. Bryer can be reached via e-mail at [email protected] . Copyright © 2002 by Lanning G. Bryer. All Rights Reserved

I. MEANS OF ACQUIRING INTANGIBLE ASSETS

In many instances, it is critical to understand the transfer of intellectual property as an essential aspect of a larger transaction, not simply the transfer of intellectual property rights by itself. On the other hand, intellectual property is very often the predominant factor driving mergers and acquisitions. The transaction should be construed in the context of a sale of an entire business in which those intangible assets are used. Generally, businesses are sold either by the purchase of the stock in a corporation or though a purchase of assets used by the business to be sold. Under either scenario, two basic sets of documents, an “acquisition agreement” and “transfer documents” will be prepared and negotiated.

II. CONDITIONS TO CLOSING

Buyer and Seller typically specify conditions that must be present or events that must occur before they are obligated to consummate the deal. A Seller typically makes representations and warranties about the business as of the date that the acquisition agreement is executed, but that date may be weeks or months prior to Closing, especially if antirust or other regulatory approvals are required in order to close the transaction. The Buyer will typically require that at Closing, the Seller warrant that the representations are still true. If certain statements are no longer true, the Buyer might have the option of declining to go through with the transaction as specified. Other conditions of Closing may reflect issues that come to light during the negotiation of the agreement. For example, in a stock sale, if the Buyer learns certain trademark rights are not owned by the corporation whose stock is being acquired, it may require that those assets either be transferred to the corporation before Closing or directly to the Buyer at Closing. If the Seller does not comply, the Buyer will not be obligated to buy the stock of the corporation.

III. CLOSING DOCUMENTS

A. purchase agreement:, 1. further assurances, b. general trademark assignment agreement.

1. Assignment – Goodwill – United States of America 2. Assignment – Goodwill – Worldwide 3. United States Issues – Intent-to-Use Applications – Verified Statement of Use 4. Intent-to-Use Applications – Amendment to Allege Use 5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

C. CONFIRMATORY ASSIGNMENT DOCUMENTS FOR RECORDAL IN THE RELEVANT JURISDICTIONS WHERE TRADEMARK RIGHTS EXIST

1. Worldwide Recordal of Intellectual Property Rights 2. Separate Documents for Each Jurisdiction are Required. 3. Costs

D. COMMERCIAL LOAN DOCUMENTS E. TRADEMARK SECURITY AGREEMENT F. RELEASE AGREEMENTS G. OPINION LETTERS H. LICENSE AGREEMENTS I. ANCILLARY AGREEMENTS AND OBLIGATIONS

In most instances, the Purchase Agreement does not actually effectuate a transfer of assets from Seller to Buyer. Instead, it merely embodies the Seller’s promise to sell stock or assets to the Buyer under certain terms. The consummation of the transaction takes place at the Closing or at a later date (post-Closing) when the parties execute transfer documents and any other ancillary agreements. This is especially true in terms of trademark rights due to their territorial nature. This may dictate a number of specific procedures which are governed by the law of each individual jurisdiction in which the trademark rights exist.

Trademark rights require specific confirmatory assignment and other

documentation to be prepared in accordance with local trademark practice for filing at the relevant Trademarks Office. Additionally, the documents required to be submitted in many jurisdictions frequently change or new requirements are added. Therefore, it may be necessary for the Seller to execute additional documentation subsequent to Closing.

In many instances, the Buyer may not be notified that it is required to submit additional documentation from the Seller until weeks or months after the Closing. Trademark rights in certain jurisdictions may not be capable of being transferred due to current political difficulties (e.g., Iraq, Libya or Afghanistan). Therefore, the Buyer may wish to make certain that the Seller (or its successors or assigns), is required to cooperate and execute such documentation.

“Further Assurances” clauses are critical in order to make certain that when this contingency arises, the Buyer can be in a position to seek Seller’s cooperation. Cooperation from the Seller is especially critical in transactions involving large trademark portfolios where the Buyer may require the Seller’s cooperation in execution of additional documents post-Closing on several occasions. The Buyer may need to ensure that it maintains an officer capable of executing documents post-Closing, especially where the corporate entity acquiring the rights changes its corporate structure by merger or acquisition.

The General Trademark Assignment Agreement is the master assignment

agreement which conveys “equitable title” to all trademark rights which are identified in a schedule, usually attached as an exhibit. In many instances, this schedule can be quite extensive as it should identify all trademarks, including common law rights, pending applications and granted registrations being transferred for each jurisdiction. This document is executed at the Closing and should bear an effective date as of the Closing date, unless the specific circumstances of the transaction dictates otherwise. The General Trademark Assignment Agreement serves several purposes:

(1) to clearly set forth and identify all trademark rights being assigned; (2) to demonstrate to tax authorities that equitable or beneficial title has passed to the Buyer; (3) to make certain that certain technical requirements unique to trademark practice are met, such as the transfer of goodwill, in order to cure any such deficiencies in the Purchase Agreement; (4) sets forth the acknowledgment of rights; (5) contains representations and warranties; (6) sets forth the obligation to execute other confirmatory documents; (7) contains further assurances clauses; (8) sets forth possible retention of rights; and (9) can be used for general corporate purposes.

1. Assignment – Goodwill – United States of America

In the United States, a trademark cannot be assigned separate and apart from the “goodwill” it symbolizes. In addition to existing case law reinforcing this traditional requirement, the Lanham Act specifically requires that the goodwill associated with a trademark accompany any transfer of the trademark itself. Section 10 of the Lanham Act provides:

“[a] registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.”

A trademark is considered merely a symbol of goodwill and has no independent significance apart from the goodwill associated therewith. Attempts to transfer trademarks without the associated goodwill of the business have been characterized as “assignments in gross” and are invalid.

The public policy behind the requirement for transferring the goodwill of the business in conjunction with the trademark itself is to prevent use of a trademark with a different goodwill and different product which may result in deception upon the consumer public. The requirement that goodwill accompany the trademark ensures that a transferee’s use will not be deceptive and will not break the continuity of the goodwill associated therewith.

2. Assignment – Goodwill – Worldwide

However, unlike the United States, many jurisdictions throughout the world do not impose a similar goodwill requirement in conjunction with the assignment of trademarks. In fact, the majority rule worldwide is that trademarks may be assigned without the goodwill. There are basically three categories worldwide in which the transfer of trademarks may or may not be transferred with goodwill. These comprise countries which:

(a) allow unfettered assignments of trademarks; (b) allow assignments with or without the goodwill but impose an advertising requirement; and (c) impose a goodwill requirement such as the United States.

In view of the above and the conflicting laws with respect to the transfer of goodwill, the General Trademark Assignment Agreement should specifically address the category of goodwill being transferred.

3. United States Issues – Intent-to-Use Applications – Verified Statement of Use

The Lanham Act allows for the application of trademarks based upon a bona fide intent-to-use the trademark at a later date. Although the Lanham Act allows for the assignment of intent-to-use (ITU) applications, it also imposes specific requirements limiting the circumstances in which they may be validly transferred. Section 10 of the Lanham Act provides:

“[n]o application to register a mark under section 1051(b) (intent-to-use applications) of this title shall be assignable prior to … the filing of the verified statement of use….except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.”

Essentially, this statute requires that either use of the mark is made (along with the proper filing of the Verified Statement of Use with the Patent & Trademark Office) or the entire business associated with the intent-to-use trademark applications has been transferred before the assignment can be considered valid.

For those instances where intent-to-use applications cannot be made subject to the assignment, either because the application has not been converted to a use-based application by the filing of an Amendment to Allege Use or the Verified Statement of Use has not or cannot be filed because use has not and will not be made by the Seller and the Buyer cannot make bona fide use of the trademark within the required time periods, it may be necessary for the parties to agree to abandonment of the application by the Seller. Towards that end, the Buyer should negotiate an undertaking on behalf of the Seller to file the necessary documentation at the USPTO to expressly abandon the intent-to-use application and not to interfere with any new applications for the trademark filed by the Buyer. Potential difficulties in adopting this approach include:

(a) loss of priority; and (b) the potential for third party objections to any new applications for the trademark which may be subsequently filed based upon priority of use.

4. Intent-to-Use Applications – Amendment to Allege Use

If use of the trademark has been made, it may be possible to file an “Amendment

to Allege Use” before the application is published for opposition, together with evidence of the assignment in order to convert this intent-to-use application into a use-based application. Once this documentation has been received and officially processed by the United States Patent and Trademark Office, this would allow for assignment of the application.

5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

If the application has already been published for opposition and it is too late to file an Amendment to Allege Use, the parties can simply agree to allow the prosecution of the intent-to-use application to continue unfettered by the Seller until such time as the Verified Statement of Use is filed. At that point, assignment of the intent-to-use trademark can take place.

It is critical that intent-to-use trademark applications are identified early so that the parties may afford them the proper treatment under current U.S. trademark practice. As it turns out, very often these trademark applications cannot be assigned at a Closing or post-Closing ceremony. This circumstance illustrates the importance of having a further assurance clause such that when the ITU applications are ready to be assigned, the Seller must execute the necessary documentation. This often takes place well after the Closing date.

1. Worldwide Recordal of Intellectual Property Rights

With the exception of all-stock deals or relatively similar stock transactions, the assets, including the trademark rights of the acquired company, need to be transferred into the name of the new owner in each jurisdiction where such rights exist. Timely recordal of a change of ownership is critical to protect the ongoing validity and enforcement of intellectual property rights for several reasons, including:

(a) If a change of ownership is not promptly recorded, a misconception can arise in the marketplace as to the identity of the actual trademark owner, leading to a possible loss of rights where a trademark no longer functions as a true indication of origin. This is particularly true in the case of well-known trademarks, or in the case of other marks which are extensively used in their particular jurisdiction;

(b) The new owner may not be able to prosecute infringements, file oppositions or attend to renewals. For example, enforcement of a trademark can only be carried out under the authority of the owner of record or its exclusive licensee. If prompt injunctive relief is required, an undesired delay will result from a necessity to record the transfer of rights. Furthermore, the right of the trademark owner to obtain damages for acts of infringement which occurred before the transfer documents were recorded may be lost in certain jurisdictions.

(c) Fines and/or penalties may be assessed for late recordal of a transfer. In certain jurisdictions, there are time limits after which it may be too late to effect proper recordal of an assignment.

(d) The failure or delay in recording a transfer of ownership may result in a possible loss of royalties. For example, if a license is to be granted and recorded under a trademark, the licensor must be the owner of record. Therefore, a delay in recording the transfer can delay the date when the license agreement becomes effective; this, in turn, can delay manufacturing and/or sales. The resulting loss of royalties may not be recoverable. In a number of countries, a license agreement must be submitted to and approved by governmental authorities and the record owner should appear as the licensor. Delay in recording thus delays approval, with consequential loss of royalties.

(e) License recordals and registered user entries will no longer be current and may affect the validity of the use by a licensee and/or governmental approval for foreign exchange authorizations for remission of royalties.

(f) In the event an “equitable transfer” occurs without the requisite official change of “record ownership” at the relevant trademark offices throughout the world, the new owner will encounter enormous difficulties when confronted with the maintenance, sale, enforcement, hypothecation, licensing and/or use of the trademark rights. For example, proof of use (where required for maintenance of existing trademark registrations) may not be accepted when used by the current owner unless that party is now reflected as the “record owner”.

2. Separate Documents for Each Jurisdiction are Required.

In order to reflect the new owner of a trademark as the “owner of record”, it will be necessary in most jurisdictions for counsel to prepare separate assignment documents for each jurisdiction in which such right exists. In some jurisdictions, a certified copy of a “general” worldwide assignment may be acceptable. Trademark statutes exist in most countries of the world and provide a mechanism for the recordal of a change of ownership at a central registry. The form and substance of these documents vary from jurisdiction to jurisdiction, which underscores the advisability for the preparation of separate documents for each jurisdiction. Such documents must be filed and recorded at the respective local registry. Furthermore, several multi-country registration systems exist, such as International Registration under the Madrid Protocol which has special requirements in order to properly record a transfer of title. In this respect, it is recommended that the acquiring company engage counsel experienced in the worldwide transfer of intellectual property rights and who is familiar with the local requirements for the preparation and recordal of documents necessary for each jurisdiction.

Other issues arise with respect to the filing and recordal of the assignment documents at the respective local registry. In particular, stamp, value added or ad valorem taxes may be assessed on the transfer or official actions may issue encompassing a potentially broad range of issues (e.g., “associated” trademarks, advertising and publication requirements) as discussed more fully below. Local requirements underscore the need for separate transfer documents to be prepared, executed and recorded in each jurisdiction in their native language. Furthermore, confidential information which the Buyer does not wish to disclose can be omitted as each transfer document can be prepared simply to satisfy the local requirements for transfer of the national trademark rights exclusively.

Where a significant number of intellectual property rights exist in multiple jurisdictions that are the subject of a merger or acquisition, the costs of simply preparing and recording the necessary documents can be substantial. Official fees are often assessed by the number of trademarks or patents included in the transfer. The burden of absorbing the costs of effecting recordal of the assignment or merger frequently is borne by the acquirer. However, this is not always the case. In some cases, the costs are factored into the purchase price and in other cases these costs are shared by the parties. For instance, the parties can agree to have the Seller absorb the costs for preparation of the documents while the Buyer pays for the charges incurred in connection with recordal of the assignment at the local Trademark Offices. Accordingly, it is advisable that the issue of costs are discussed by the parties and treated in the Purchase or Acquisition Agreement entered into during the course of negotiations.

D. COMMERCIAL LOAN DOCUMENTS

Where elements of a transaction are being financed by a commercial lender, all commercial loan and security documents should be executed prior to or at the Closing ceremony. These documents can include:

(a) Credit Agreements; (b) Loan and Guarantee Agreements; (c) Promissory Notes; (d) Escrow Agreements (e) Security Agreements; (f) Release Agreements pertaining to prior commercial security obligations among one or all of the parties; (g) Consents, Waivers and Subordination agreements; and (h) All other relevant Commercial Loan and Security Documents;

E. TRADEMARK SECURITY AGREEMENT

Like many commercial transactions, business transactions involving trademarks frequently require that the acquirer borrow funds to finance the transaction. In these instances, the lender providing the funds will seek collateral from the borrower to secure the loan as protection against the risk of default. When trademark rights are the subject of a security interest, the grant must take place in the form of a Trademark Security Agreement or similar document.

F. RELEASE AGREEMENTS

Prior to Closing, the presence of any liens, security interests or other encumbrances in trademarks will be revealed in one of two ways:

1. Representations and Warranties: Carefully negotiated representations and warranties in the Purchase Agreement and/or General Trademark Assignment Agreement will require the Seller to confirm whether prior encumbrances exist against the trademark rights. If such encumbrances against the trademarks exist and are still valid and subsisting, Buyer’s counsel must require the disclosure of these security interests and, wherever possible, require the release of these security interests prior to or at the Closing ceremony.

2. Due Diligence: Due diligence conducted on behalf of the Buyer, including searches of the relevant trademark registries, should reveal the existence of security interests which have been properly perfected against registered trademark rights. Where unregistered trademarks rights have been collateralized, however, a search of the Trademark Registry would not reveal such encumbrance.

For those trademark rights that have been made the subject of a security interest, it is critical to make certain that a Release of these rights is executed on behalf of the secured party in favor of the Grantor (i.e., the Seller). An obligation to obtain the release of these security interests should be made a condition precedent to the transfer. In most instances, the secured party will not be present at the Closing. If possible, the Release should be executed Nunc Pro Tunc to the date of the Closing. The rationale behind this is to make certain that when the Release is presented for recordal at the relevant Trademark Office, the assignment document does not bear an execution and/or effective date prior to the date of the Release. The Release should always be filed and recorded prior to the assignment document in order that the proper chronological chain of title is reflected on the Trademark Register.

Regardless of the manner in which prior security interests against registered or unregistered rights are discovered, arranging for execution of appropriate release documentation (either a Release Agreement or UCC-3) prior to or simultaneously at the Closing is critical. Furthermore, if the secured party is not the Seller, there is no guarantee that the secured party will necessarily release its security interest in the trademarks, depending upon the nature of its prior business with the Seller. In any event, execution of appropriate release documentation by the Seller should be made a condition precedent to performance on behalf of the Buyer.

G. OPINION LETTERS

Seller’s counsel is frequently required to deliver an opinion letter at Closing

concerning trademark issues in business transactions. For an acquiring or investing company, opinion letters are significant in that they are intended to bind the Seller to representations typically on the following:

(a) ownership; (b) validity; (c) enforceability; (d) absence of encumbrances; (e) non-infringement of third party rights; (f) non-infringement by third party; (g) effectiveness of proposed security documents for attachment, perfection and priority of a security interest; and, (g) valuation of the trademark portfolio.

Whenever possible, opinion letters concerning trademark rights should be

rendered by the Seller’s trademark counsel, who, in all likelihood, is already quite familiar with the portfolio. If necessary, extensive due diligence may need to occur before the rendering of an opinion letter. Opinion letters are equally critical in financing or licensing transactions where the trademark is serving as the primary asset or collateral. Separate valuation opinions may also be required to be delivered at Closing. These opinions are concerned with assessing trademarks using different accounting methodologies to determine the actual or fair market value of the trademark asset.

H. LICENSE AGREEMENTS

Many business use intellectual property, including trademarks, that is licensedfrom third parties. The method upon which trademark licenses may be transferred to a Buyer depends upon whether the transaction is a share purchase or an asset purchase. In the case of a share purchase, the Buyer’s position is relatively straightforward, since by acquiring the shares in the company, the Buyer will automatically acquire all pre-existing commercial agreements, including all trademark license agreements. In the case of an asset purchase, any existing trademark licenses will not pass automatically and will need to be specifically transferred to the Buyer. The possible methods of transferring a trademark license include:

A Novation Agreement between the Seller, the Buyer and the licensor. The Buyer then becomes a party to the license in place of the Seller, and the Seller is released from its obligations under the license.

Assignment or sublicensing of the license . The prior license may contain an express prohibition on the assignment or sublicensing of the license without the consent of the licensor. Any and all consents should therefore be obtained prior to Closing. The Buyer and Seller will need to determine whether the obligation to negotiate and obtain such consents falls on the Buyer or the Seller. The acquisition agreement may even provide that the Buyer is not obligated to close the transaction if consents from key licensors cannot be obtained.

I. ANCILLARY AGREEMENTS AND OBLIGATIONS

The acquisition agreement often specifies other obligations of the parties related to the acquisition. With respect to trademarks, a license from the Seller to the Buyer or vice versa, is not uncommon. This typically occurs in situations where the Seller is parting with one of its businesses but has certain trademark rights that are used in that business and the business it is retaining. In such a situation, the Seller can either retain the shared trademark right and license it to the Buyer post-Closing or sell it to the Buyer and take a license back. Additionally, short-term licenses may be needed to allow the Seller to phase out its use of certain trademarks post-Closing.

IV. CLOSING DAY

A. execution process b. payment c. delivery of related documents and files: , a. execution process.

(1) Location – having a central location bringing together all therelevant parties for execution of the documents is helpful. There are distinct benefits in arranging for execution of all necessary documents, including confirmatory assignment documents, at Closing, including:

(a) by having a central location for execution of all the documentation, the presence of all necessary parties, including duly authorized officers of the Buyer and Seller, to complete execution of the documents results in greater efficiency in terms of time and reduced costs for the party bearing the expense, usually the Buyer.

(b) by not executing the documents piece-mail, counsel for the Buyer can immediately take possession of the confirmatory assignment documents and begin the process of dispatching the documents overseas for filing at the respective trademark offices. This is critical for two reasons:

(i) it eliminates the risk, which exists in many jurisdictions, that the Trademarks Office will impose fines or penalties for late submission of change of ownership documentation.

(ii) it eliminates the risk of rejection of the documents in their entirety for late submission or “staleness”. This is especially true if the documents are backdated or bear an effective date earlier than the date of actual execution and the jurisdiction has a particularly short filing deadline.

(2) Availability of notaries: by having all of the confirmatory assignment documents executed at the Closing or post-Closing ceremony, the parties will be able to take advantage of the presence of attesting notaries and witnesses as well as their designated signatories. When executing confirmatory assignment documents for purposes or recordal at national trademark offices, very often these documents require notarization and/or consular legalization or authentication by Apostille. For those countries that require consular legalization, especially in large transactions, by having both the Seller and Buyer execute all the confirmatory assignment documents in one location, the notarial acknowledgments will be uniform. This, in turn, will expedite the process of authentication, certification of the notarial acknowledgment and consular legalization at the Department of State or individual foreign consulates.

(3) Authorization of Officers to Execute Documents: The parties should require documentary evidence of the representations of both Buyer and Seller to legally execute the Closing documents and bind their companies. This evidence might include a Power of Attorney, a Board of Directors Resolution, Certificates of Incorporation or By-Laws. In terms of recording the assignment of rights abroad, several jurisdictions, especially in Latin America, require detailed notarized documents providing that the officer who executed the assignment documents on behalf of the company (whether Buyer or Seller), has been appointed as an agent of the company authorized to act on its behalf or appointed as an officer pursuant to a specific Resolution of the Board of Directors or other documents. In most instances, this will require the completion of detailed information such as the date of the resolution and/or the date that the company was incorporated.

(4) Country/Place of Execution: The place of execution will affect the manner in which the documents are notarized and/or legalized. In terms of a worldwide recordal program, having all the documents executed and subsequently notarized by notaries who are qualified in the same county or country will hasten the legalization process in that the notarials can be certified by at a single County Clerk’s office. By not doing so, having several documents sent to several different counties for certification can result in significant delay.

(5) Contingencies: Trademark counsel, whether representing the Buyer or Seller, should be prepared for all contingencies which may arise at a Closing with respect to execution of the documentation. Such contingencies can include:

(a) Errors in Preparation: Due to the jurisdictional nature in which trademark rights arise, the preparation of an extraordinary amount of documentation is required in terms of preparing for a worldwide assignment recordal. As such, if an error in preparation is discovered at the Closing, trademark counsel should be prepared to immediately correct such error(s) in order to promptly arrange for execution of the new, correct document. Towards that end, counsel should make certain in advance that:

(i) Adequate staff is available to implement such changes; Electronic versions of all documents are at counsel’s disposal in order to promptly implement such corrections.

(b) Errors in Execution: In terms of worldwide trademark assignment recordal programs requiring execution of what can be an extraordinary amount of documentation, it is inevitable that mistakes in execution will occur. This situation arises more frequently when several different parties are required to execute the same document, such as officers of each party, attesting witnesses and notaries. As discussed above, counsel should be in a position to have adequate staff and electronic versions available to promptly arrange for the preparation of new documentation.

(6) Corporate Seals: Corporate seals for each entity should be available at the Closing. Trademark counsel should make certain well in advance of the Closing date that either the officers of each company bring such seals to the Closing or that new seals are promptly ordered and available by the Closing date. Although affixing corporate seals can occur at any time subsequent to the Closing, this may delay the filing and ultimately the recordal of the assignment documents at the Trademark Registries. The failure to affix corporate seals can result in rejection of the assignment documents in several jurisdictions.

The following concepts should be kept in mind in terms of transfer

1. Check/wire transfer: all pertinent banking particulars should be available to the parties, especially in the context of a wire transfer, so that the appropriate funds can be transferred to the Seller without undue complication;

2. Confirmation of receipt: confirmation of receipt of such funds should be available and delivered to the Seller upon request.

3. Escrow Accounts: established.

C. DELIVERY OF RELATED DOCUMENTS AND FILES:

1. Files : From a trademark standpoint, relevant files pertaining to the

trademark rights should be delivered to the new owner, to the extent possible, at or post-Closing, which can include:

(a) pending application files: should be delivered to counsel for Buyer in order to make certain that all actions and/or deadlines are met. (b) opposition/cancellation files; (c) litigation files; (d) prior chain of title files; (e) pending renewal files; (f). license files; and (g) general trademark files.

In arms length transactions, Buyer’s trademark counsel will often be different from that of the Seller. Therefore, Buyer’s counsel should prepare a simple, but formal letter to Seller’s counsel requesting the immediate transfer of all files subject to the transaction.

2. Certificates of Registration: To the extent possible, Certificates of Registration for each trademark registration should be delivered to the Buyer at Closing or shortly thereafter. Depending upon the specific portfolio, rights in the trademark may have been registered several years or decades ago, and therefore, it is not unusual for many of these certificates to have been lost or destroyed. In order to record the assignment in favor of the Buyer in those jurisdictions which require submission of the Certificate of Registration, it will be necessary to obtain certified copies of the Certificate of Registration from the Trademarks Office. In large transactions, this could result in significant additional expenses, especially in less sophisticated jurisdictions, which the parties should anticipate. If not negotiated in the Purchase Agreement or General Trademark Assignment Agreement, this additional expense will usually be borne by the Buyer.

3. Letters to local trademark counsel re: file transfer: Where several trademark applications, renewal filings or conflicts are pending worldwide and if the Buyer prefers to use local counsel differing from that of the Seller, Buyer should notify its preferred counsel to instruct Seller’s counsel to immediately transfer such files. Buyer’s preferred counsel should then file the appropriate substitution of counsel documentation with the Trademarks Office where necessary so as not to interfere with the prosecution of the applications when the assignment documents are filed. At the very least, notice to all counsel by Seller’s counsel should be sent out advising of the change in ownership and responsibility.

V. POST-CLOSING ISSUES:

A. immediate docketing of trademarks/action dates: b. handling actions (official actions/renewals/payments) c. review of files to re-assess value of trademarks/major markets: d. filing and recordal of confirmatory assignment documents in each jurisdiction where trademark rights exist e. filing and recordal of confirmatory documents to record a merger and/or change of name f. security interests, a. immediate docketing of trademarks/action dates:.

It is critical that upon possession of the transferred files, an immediate review to determine when renewal dates, terms, responses to official actions and other “action” dates are due. In addition to the particulars of the trademark (mark, registration number, registration date, etc.), these “action” dates should be immediately uploaded into a computer database in order to alert counsel to any impending actions.

B. HANDLING ACTIONS (OFFICIAL ACTIONS/RENEWALS/PAYMENTS)

Any and all trademark applications and registrations requiring immediate action should be brought to the new owner’s attention in order to prevent the loss of such rights. Very often, the new owner will conduct a complete review of which trademarks it is interested in maintaining, however, this process can very often be quite lengthy. Therefore, it is critical that the new owner be advised of immediate action dates in order that their instructions may be timely received. This obligation on the Seller should be a condition of the sale and include a post-Closing undertaking by Seller to assist Buyer in taking any and all steps necessary to preserve and protect the trademark rights.

C. REVIEW OF FILES TO RE-ASSESS VALUE OF TRADEMARKS/MAJOR MARKETS:

Buyer may wish to eliminate any unwanted registrations or applications subsequent to the acquisition. They can abandon them at the time of renewal and just not record assignments against them.

D. FILING AND RECORDAL OF CONFIRMATORY ASSIGNMENT DOCUMENTS IN EACH JURISDICTION WHERE TRADEMARK RIGHTS EXIST

(1) Filing expenses: Expenses associated with the filing and recordal

of confirmatory assignment documents to record the Buyer as the official “owner of record” can, especially in transactions where worldwide trademark portfolios are being assigned, be quite expensive. There are several costs associated with the filing and recordal of the documentation, including:

i. government fees: often assessed on a per trademark basis; ii. local counsel fees: in connection with filing the assignment recordal application iii. taxes; depending upon the jurisdiction in the form of ad valorem, value added or stamp duties; iv. translation fees: upon filing or in connection with the official publication of the assignment (if required); v. publication fees: in connection with local advertising or publication of the transfer in a local newspaper or periodical (if required); vi. foreign consular legalization or authentication charges; vii. charges for obtaining duplicate or replacement Certificates of Registrati on: if required; and viii. recordation of any change of address: if required.

(2) Consideration: Several jurisdictions require that a specific monetary consideration be recited in the Deed of Assignment for recordal purposes. If the trademarks are assigned as part of a transaction involving the transfer of other assets, the consideration for the transfer is some portion of the consideration for the entire transaction. Prior to filing, trademark counsel should consult with the new owner of the trademarks to determine an appropriate consideration to be recited in each Deed of Assignment for those jurisdictions where it is mandatory to recite same. Trademark counsel should be familiar with the possible local tax requirements when advising the new owner so as not to trigger any unanticipated local tax assessments upon the transfer. Additionally, where tax assessments cannot be avoided upon the transfer, trademark counsel and Buyer should evaluate and determine the specific amount to be paid to the local tax authorities well in advance of filing so that the Buyer can factor this amount into its budget.

(3 Legalization/Authentications: In several jurisdictions, prior to filing the confirmatory assignment documentation, it will be necessary to arrange for the consular legalization and/or authentication of the confirmatory assignment documentation. While some embassies undertake the process of legalization in an expedient fashion, many embassies, especially from less sophisticated jurisdictions, have a slow turnaround time. Additionally, it is often necessary to have documents which require legalization to be sent to a County Clerks’ office to certify that the notary is, in fact, a notary public in good standing in that country and/or to have the documents sent to the Department of State as well.

(4) Filing Process: When the confirmatory assignment documents have been executed, notarized and legalized (where necessary) and after a careful review to determine that no information or signatures are missing, the documents are ready to be filed at the respective trademark offices. Trademark counsel should consider the following issues when forwarding the assignment documentation to local counsel for filing:

(a) pending trademark applications: in order to not interfere with the prosecution of the application, trademark counsel should consider using the same agent for purposes of recording the assignment. If trademark counsel would prefer to use a different agent than the one prosecuting the application, counsel should coordinate its effort with the agent of record and its preferred agent so as not to interfere with the prosecution.

(b) pending renewal applications: where a renewal application is pending in the name of the new owner, the assignment documentation must be filed with the same agent in order that the agent can prove that the entity renewing the registration is, in fact, the new owner.

(c) deadlines: certain jurisdictions require the filing of the assignment documentation within a certain period of time from the date of execution. For example, some British law countries still operating under the 1938 Trade Marks Act require assignments made without goodwill to be filed within six months of the date of execution for advertising purposes. Other countries which impose a deadline upon filing of assignment documents include:

(d) official actions: It is practically inevitable that when arranging for the recordal of an assignment against hundreds or even thousands of trademarks on a worldwide basis, objections and official actions will issue by the Trademarks Office. Among the types of official actions to be anticipated are:

(i) owner of record: the Trademark Registry does not reflect the Seller (assignor) as the official “owner of record”. For whatever reason, the Seller never undertook to record itself as the new owner against the trademark rights in a particular jurisdiction. Accordingly, the Registrar will require that documentation evidencing the assignment from the previous owner to the Seller be submitted together with the new assignment documentation.

(ii) “association” requirements: the trademark laws of several jurisdictions have a requirement in place known as the “association” requirement. Under the association requirement, if an application for assignment is filed only against some, but not all, trademarks owned by an assignor which it has registered at a particular trademark office, the Examiner may issue an official action claiming that the assignment cannot proceed due to the existence of “associated” trademarks. In most instances, the Examiner determines that a mark is associated when there is a common element or word contained in the marks. In order to overcome this objection, there are normally three options available:

Prepare new assignment documentation for execution by the parties against the associated trademarks which were not subject to the assignment.
File a petition with the trademark office in an effort to “break the association” between the trademarks, arguing that the trademarks should not be “associated” and recordal should proceed uninhibited.
Commence cancellation proceedings against the associated trademarks.

(iii) change in local practice: the requirements of local trademark practice shift on a fairly regular basis which may result in requests for additional forms, Powers of Attorney, Affidavits or other documents to be submitted with the assignment documents. In some instances, new assignment documents are required altogether.

(iv) missing/lost documents: It is not uncommon for Trademark Offices to temporarily misplace or lose entirely a complete set of assignment documents, especially in less sophisticated jurisdictions. Regardless of fault, a new set of assignment documents can be executed by the parties and submitted to the Trademark Office or in certain cases, certified copies will be accepted.

(v)change of address: the address of the Seller as reflected on the official registry differs from that contained in the assignment document. Accordingly, a Declaration of Change of Address must be filed in order to overcome this objection and allow the recordal of the assignment to proceed.

(vi) license recordal or registered user entry in name of Seller: when the Seller is recorded as a licensor/licensee or registered user, the Examiner may require evidence of the novation of the license or registered user agreement to reflect that the Seller is no longer the licensor or licensee of the mark.

Regardless of the type of official action which may issue, one dominant theme is clear. Officers (or former officers) of both the Buyer and the Seller should be available to execute whatever additional documentation is requested by the local Trademark Office to complete the transfer of “record title” to the Buyer.

(e) Proof of recordal: In most jurisdictions, proof of recordal of an assignment, merger or change of name is issued within six months to one year. In other jurisdictions such as India or Italy, proof of recordal may not be issued for approximately 4-5 years. In any event, when the proof of recordal is received, this document should be carefully reviewed to determine the following:

the name and address of the new owner is correctly reflected on the certificate;

the date of the recordal is stated;

the correct application and/or registration numbers are recited on the certificate.

E. FILING AND RECORDAL OF CONFIRMATORY DOCUMENTS TO RECORD A MERGER AND/OR CHANGE OF NAME

Although many of the issues discussed above pertaining to recordal of

confirmatory assignment documents remain true for the recordal of a merger and/or change of name, such as the assessment of government fees on a per trademark basis, as a general rule, fewer documents need to be prepared and executed by the parties for recordal purposes. In many jurisdictions, recordal of a change of name and/or merger can be accomplished with the following documents:

(a) Power of Attorney: usually executed by the Buyer only;

(b) Certificate of Merger/Change of Name: issued by the appropriate Secretary of State’s office (if a U.S. corporation) or similar governmental authority outside the U.S.

Unlike an assignment, however, all assets of the combined companies pass to the new entity by operation of law and therefore, recordal of a merger/change of name must be recorded against all active trademark applications and registrations which stand in the name of the Seller at a particular Trademark Registry.

F. SECURITY INTERESTS

Increasingly, security interests in intellectual property and, in particular, trademarks, are becoming more and more common. Towards that end, perfection of security interests in trademarks worldwide is becoming more common. Recordal of security interests in trademarks is a well-established practice in only the most sophisticated jurisdictions and even there, similar to the United States, the law in this area is not well settled. However, for those jurisdictions outside the United States where security interests have been recorded at the Trademarks Registry, it may be necessary to seek the opinion of local counsel in order to determine whether release documentation prepared for recordal at, for instance, the USPTO, will be sufficient to release the security interest under local law.

(i) Perfection of security interests in trademarks in the United States: With respect to U.S. common law and U.S. State trademark registrations, Article 9 of the UCC would apply and the appropriate UCC-1 forms should be filed and perfected at the relevant County Clerk’s Office and/or Secretary of States office. With respect to federally registered rights, the landscape concerning perfection of security interests still remains unclear. While the Lanham Act makes no direct reference to recordation of security interests, the USPTO will accept and it is now common practice to record security interests in trademarks at the assignment division. At the very least, recordation at the USPTO provides constructive notice to subsequent purchasers for value.

(ii) What countries recognize perfection of security interests: As the value

of intellectual property rights are more widely recognized now than ever before, more and more companies are placing a premium on the protection of these rights, including trademarks. Companies with substantial worldwide portfolios are increasingly offering not only their domestic trademark rights as security to finance a transaction, but increasingly, their international rights as well. Towards that end, secured parties would be well advised to seek perfection of these security interests at the trademark offices in several, if not all, of the jurisdictions in which the trademark security interest has been granted. However, at this time, only the most sophisticated jurisdictions recognize the creation of security interests in trademarks and offer a mechanism for perfection of same at the Trademark Office.

(iii) Will the security documents suffice to create and perfect the security interest in the relevant jurisdictions? – Subsequent to identifying those jurisdictions which offer a mechanism for perfecting a security interest in trademarks, it is critical to determine whether the General Trademark Security Agreement or other trademark security documents will be accepted for recordal. While some jurisdictions will accept a standard security agreement, it may be necessary to effect certain amendments to the Agreement in order to create a valid security interest under local law. A common example of this would be changing the “governing law” provisions to that of the jurisdiction under which perfection is sought. In many instances, it may be necessary for the parties to execute several new trademark security agreements tailored specifically for creating and perfecting trademark rights in certain jurisdictions. Towards that end, it may be necessary to engage local counsel early to determine whether the Trademark Security Agreement will suffice for purposes of creating and perfecting a valid security interest in trademarks under local law.

(iv) Supplemental documentation to the Trademark Security Agreement : In addition to amendment or possibly creating a new Trademark Security Agreement in compliance with local law, it is often the case that additional documents will need to be executed by the parties and submitted together with the Trademark Security Agreement. Such documents can include:

(1) Application forms; (2) Powers of Attorney; (3) Short-Form Security Agreements; (4) Commercial Security Agreements for filing at the municipal level (if necessary); and (5) Various other forms required under local trademark and/or commercial practice.

(v) Obtaining opinion letters from local counsel : In order to make certain

that the secured party is not blindly undertaking the ministerial act of perfecting the security interest, it may be worthwhile to obtain a formal opinion letter of local counsel discussing some or all of the following points:

(1) whether any prior liens or encumbrances have been recorded against the trademark; (2) whether a valid security interest is created by the Trademark Security Agreement under local law; (3) whether the security interest is capable of being perfected at the local Trademark Office; and (3) subsequent to perfection at the Trademark Office, whether the security interest is capable of being enforced against third parties;

In what countries should perfection take place/cost assessment: Simply

determining which jurisdictions recognize perfection of security interests in trademarks and identifying what supplemental documentation would be needed is not enough. A thorough cost-assessment of the value of the trademarks subject to the security interest may be worthwhile. In the end, it may not be worthwhile to proceed in a jurisdiction where notoriety or sales in the trademarks do not exist. Factors to consider in this determination are:

(1) The number of trademarks subject to the security interest; (2) The government fees in perfecting the security interest; (3) Local counsel fees in preparing an amended or new Trademark Security Agreement, supplemental documentation, opinion letters and handling the perfection of the security interests; (4) The value of the trademarks as determined by notoriety and/or sales in the products bearing the trademarks; (5) The sophistication of the jurisprudence in a particular jurisdiction; and (6) Other standard valuation benchmarks in determining the value of trademark rights.

(vii) time considerations: In addition to cost considerations, time is also a factor when considering perfection of security interests abroad. While certain jurisdictions can typically record the security interest at the Trademark Office within 3-6 months, there are still many jurisdictions which typically require several years before recordal is officially reflected on the register. Furthermore, expedited recordal procedures are generally not in place. Therefore, in terms of obtaining the benefits of perfection by providing notice to third parties, proceeding in some of these jurisdictions may not be worthwhile.

(viii) events of default/enforcement procedures: In the event of a default, trademark counsel should be aware of what steps must be taken in order to enforce the security interest and foreclose on the trademark assets. If the defaulting party is unwilling to assign rights in the trademark back to the secured party, the secured party may need to bring a court action under local commercial or trademark law.

The key to a successful Closing is, preparation, organization and anticipation. Anticipation results in no or few surprises at the Closing ceremony. Preparation leads to a more mechanical and faster process. Good organization ensures that every issue and step in the process is dealt with so that no open issues remain and all required documents are executed and delivered. Clients will generally be impressed by and grateful for a smooth and uneventful Closing process.

Patent Laws, Regulations, Policies & Procedures
Manual of Patent Examining Procedure
Chapter 0300
Section 302

302 Recording of Assignment Documents [R-07.2015]

37 cfr 3.11 documents which will be recorded..

(a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
(c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58 Governmental registers.

(a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
(b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24 requirements for documents and cover sheets relating to patents and patent applications..

(a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
(b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26 english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21 identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293 nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61 Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41 recording fees..

(a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
(2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet [R-10.2019]

37 cfr 3.28 requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31 Cover sheet content.

(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
(5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(6) The date the document was executed;
(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
(8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
(b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
(1) Indicate that the document relates to a Government interest; and
(2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b) ).
(d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
(f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
(1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
(2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
(3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
(4) Indicate the date the joint research agreement was executed.
(h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

(A) The name of the party conveying the interest;
(B) The name and address of the party receiving the interest;
(C) A description of the interest conveyed or transaction to be recorded;
(D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
(E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(F) The date the document was executed; and
(G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

(A) assignment;
(B) security agreement;
(C) merger;
(D) change of name;
(E) license;
(F) foreclosure;
(H) contract; and
(I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

Form PTO-1595. Recordation Form Cover Sheet for Patents

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27 mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

(A) an identified application or patent number;
(B) one cover sheet to record a single transaction; and
(C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

(A) Assignments submitted concurrently with newly filed patent applications;
(B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
(C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4 Nature of correspondence and signature requirements.

(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer can be readily recognized.
(3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

(A) an identified application or patent number; and
(B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

301.01-Accessibility of Assignment Records
302.01-Assignment Document Must Be Copy for Recording
302.02-Translation of Assignment Document
302.03-Identifying Patent or Application
302.04-Foreign Assignee May Designate Domestic Representative
302.05-Address of Assignee
302.06-Fee for Recording
302.07-Assignment Document Must Be Accompanied by a Cover Sheet
302.08-Mailing Address for Submitting Assignment Documents
302.09-Facsimile Submission of Assignment Documents
302.10-Electronic Submission of Assignment Documents
303-Assignment Documents Not Endorsed on Pending Applications
304‑305-[Reserved]
306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
307-Issue to Non-Applicant Assignee
308-Issue to Applicant
309-Restrictions Upon Employees of U.S. Patent and Trademark Office
310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
311-Filing of Notice of Arbitration Awards
312-[Reserved]
313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
314-Certificates of Change of Name or of Merger
315-Indexing Against a Recorded Certificate
316-[Reserved]
317.01-Recording Date
317.02-Correction of Unrecorded Returned Documents and Cover Sheets
317.03-Effect of Recording
318-Documents Not to be Placed in Files
319-[Reserved]
320-Title Reports
321‑322-[Reserved]
323.01(a)-Typographical Errors in Cover Sheet
323.01(b)-Typographical Errors in Recorded Assignment Document
323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
323.01(d)-Expungement of Assignment Records
324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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Assignments overview and pitfalls to beware!

03 December 2012

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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Trademark Assignment

Rating: 4.8 - 30 votes

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

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TMEP 501.01(a): Assignability of Intent-to-Use Applications

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 501 : Assignment of Marks 501.01 : Assignability of Marks in Applications and Registrations

Previous: §501.01 | Next: §501.01(b)

501.01(a) Assignability of Intent-to-Use Applications

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b) , the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060 ; 37 C.F.R. §3.16 .

The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent "trafficking" in marks.

As a general rule, the United States Patent and Trademark Office ("USPTO") does not investigate or evaluate the validity of assignments. Therefore, the examining attorney must issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:

(1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
(a) The assignment is executed before the filing of an allegation of use;
(b) The applicant submits the assignment document for inclusion in the application record in the Trademark database, and not just to the Assignment Recordation Branch; and
(c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

The examining attorney should not require the submission of assignment documents to determine compliance.

If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to resolve the issue. This statement may be entered through an examiner’s amendment.

The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application void, and any resulting registration must be cancelled. Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); cf. Amazon Techs., Inc. v. Wax, 95 USPQ2d 1865, 1872 (TTAB 2010) (finding "the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application is more in the nature of 'relinquishment' of ownership rights by one joint owner than a true 'assignment' to a different legal entity, and, thus, it is not prohibited under §10 of the Trademark Act").

Practical Law

Transferring intellectual property rights: avoiding the pitfalls

Practical law uk articles 2-504-4154 (approx. 11 pages).

What IPR are from a legal perspective.
The practicalities and consequences of the registration of registrable IPR transactions, and the due diligence to be conducted.
How to identify the relevant IPR to be transferred.
How to document the transfer.
Some important issues concerning liability arising on the transfer of IPR.

Legal nature of IPR

Confidential information, community rights, registering assignments of ipr, administrative and costs issues.

It was not practicable to register the assignment within the six-month time limit.
The assignment was registered as soon as practicable thereafter.

Protecting mortgages and charges

Registered rights due diligence.

Carry out an initial search of the register to check that the seller is the registered proprietor. Check for any earlier assignments to that seller and investigate thoroughly any such assignments and the circumstances surrounding them. If there are any such assignments, consider taking an assignment of the seller's causes of action for failure to deliver good title against his own seller (if any still remain).
Carry out a second search on the morning of completion as the IPO/OHIM update their registers at midnight following each working day.
Register the transaction on the day it completes, wherever possible, or as soon as possible thereafter.
Require the seller to assign with full title guarantee (see " Liability " below).

Identifying the relevant IPR

Identify the relevant registered IPR which are to be transferred.
Produce a conceptual definition of the non-registered IPR which are to be included in the sale, such as "all the company's know-how (whether recorded or not) and documentation relating to the process of manufacturing xyz".
Identify which (if any) of the IPR being transferred will still need to be used by the seller or its group after the transaction has taken place, and determine how such access is to be secured (this will usually require some form of licence back).
Identify which IPR are not going to be transferred to the buyer, and consider whether or not to write to the buyer explaining precisely which IPR are not going to be included in such a sale and why. This can stop arguments occurring later as to what was meant to be included or excluded, and should also make an action for rectification (correction) of the assignment agreement much more difficult for the buyer to win.
Properly instruct the seller's negotiating team and lawyers as to the matters above.

Documenting the transaction

Assigning by deed, method of assignment in a sale and purchase agreement, what should be assigned in an spa, country-specific agreements, patent attorney files.

The person disposing of the IPR has the right to dispose of them.
The person disposing of the IPR will do all he reasonably can do, at his own cost, to give the assignee the title he purports to give ( section 2(1), 1994 Act ).
Charged or encumbered the IPR with any charge or encumbrance, which still exists at the time of the present disposition.
Granted any third party rights in relation to the IPR, which still subsist at the time of the present disposition.
Allowed anyone else to do so.

Excluding liability

Sale of goods act 1979, mortgages and charges of ipr.

An outright assignment of the legal title in the IPR to the lender.
A right of redemption; that is, the right to have the legal title transferred back to the borrower once repayment and other obligations have been fulfilled.
Pending exercise of the right of redemption by the borrower, some form of licence back from the lender to the borrower to enable the borrower to use the IPR in its business.
The charging clause.
A transfer mechanism to allow the transfer of the IPR in the event of default.
A range of negative obligations on the borrower not to grant conflicting security or other interests in the charged IPR.

Practicalities of assignment: an overview

Problems with the ipr registration system.

Trade Marks
Confidentiality
United Kingdom

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Trademark assignment agreements: managing rights post-brexit.

Since the UK’s departure from the EU, there has been a significant rise in the number of trademark assignment recordals against UK registrations taking place as EU trademark owners are now required to manage these rights separately, says Trademark Paralegal Megan Taylor.

In order for transfers of ownership to be recorded, businesses must provide a copy of the relevant document assigning their ownership, to ensure that a valid transaction has taken place under the laws of England and Wales. It is important to ensure the transfer is a valid transaction as the mark could be the basis of, or subject to, future disputes where questions around its validity could be raised and result in a possible loss of costs.

What makes a transaction valid in the UK?

Despite s.24(3) of the Trade Marks Act 1994 (TMA) stating that a trademark assignment is considered effective if it is in writing and signed on, or behalf of, the assignor (or their representative), there are other laws relating to the transfer of property which must be considered; for example, statutes that pre-date the TMA. One such statute is the Law of Property (Miscellaneous Provisions) Act 1989 which sets out the requirements for a valid Deed for transfers of ownership between individuals. Similarly, the Companies Act 2006 provides guidance in relation to Deeds executed by a company.

It is also important to note that while EU member states can rely on their codified national laws for transferring property within the EU, the UK also incorporates Common Law into its judicial system. The relevant laws here being the Law of Contracts.

Deeds v Assignments

When ownership of a trademark registration is transferred as part of a larger transaction, a copy of the relevant extract of the larger agreement is sufficient to proceed with the recordal.

However, in other instances, there may be no formal transaction in place or a confirmatory document may be required to simplify or clarify the transfer of any IP right specifically. In these cases, a separate trademark assignment (or other IP assignment) document should be drafted for execution by the parties.

In the UK, there are two types of document that enable the transfer of ownership of property – a deed of assignment and an assignment agreement, the latter also being known as a contract. While both documents are typically in writing, contain a title to confirm the document type and express the intentions of both parties, one of the most distinguishable requirements for a deed is the execution. In addition to the document being signed by both parties, for a deed to be effective both signatures must also be fully witnessed owing to there being no consideration.

Alternatively, the relevant parties may have an assignment agreement drafted. The laws governing contracts in the UK derive from the courts and are therefore formed under Common Law. In order to be a valid contract, there must be four main elements: an offer, acceptance of that offer, an intention to create legal relations and consideration (in other words, what each party gains from the contract). When it comes to formalising this contract, it is vital that the consideration is contained in the document, even if the sum is £1. If this is not included, the document cannot be treated as a valid contract.

Change of name requirements

Furthermore, it should be noted that where a company number or legal status of a business has changed as the result of a change of name, the transaction should be recorded as an assignment and not a change of name. This is due to the fact that the entity that owns the mark has changed and is no longer the same entity as the prior owner. However, there is no need to evidence this change with a Deed or Agreement to record this at the UKIPO, as a commercial extract will suffice.

Key points to consider

When reviewing ownership portfolios or selling IP post-Brexit, it is important to consider the following:

Is there consideration? Determine whether you are transferring the property as a Deed or under an Agreement – different document types may be more beneficial depending on the circumstances of the transaction.
Seek advice before executing. Our local associates can confirm whether the document is compliant with national laws. With our reach, we may also be able to provide a suitable single document to cover multiple jurisdictions, saving you and/or your client(s) a huge amount of associated costs.
If unsure, just ask. We are at your disposal and happy to help facilitate easy execution, provide legal certainty, and save time in the long run.
Take caution with local legal wording. Even if something is titled a ‘Deed’, it is not always the case.
Be careful not to exclude crucial details. For example, something seemingly insignificant missing from an assignment document can render the whole agreement invalid. In the UK, even the phrase “ In consideration of £1 (one Pound Sterling) the receipt of which is hereby acknowledged ”, or a “peppercorn” as it is nicknamed, as a metaphor for a very small cash payment or other nominal consideration, used to satisfy the requirements for the creation of a legal contract.

Get in touch with our UK Trademark experts for further advice on how to manage trademark assignments post-Brexit.

Megan Taylor is a Trademark Paralegal and Luke Portnow is a Trademark Attorney at Novagraaf in the UK.

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Trademark assignment agreement.

Jump to section.

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

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

Essential Elements of a Trademark Assignment Agreement

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

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

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

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

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

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

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

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

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

Importance of a Trademark Assignment Agreement

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

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

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

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

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

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

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

Benjamin W.

Common Mistakes to Avoid in Trademark Assignment Agreement

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

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

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

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

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

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

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

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

Key Terms for a Trademark Assignment Agreement

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

Final Thoughts on a Trademark Assignment Agreement

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

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

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

If you want free pricing proposals from vetted lawyers that are 60% less than typical law firms, click here to get started. By comparing multiple proposals for free, you can save the time and stress of finding a quality lawyer for your business needs.

Meet some of our Trademark Assignment Agreement Lawyers

Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.

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

Scott Bowen, Esq brings legal experience in family law, special education law, and healthcare law matters. Scott also has over 20 years of expertise in healthcare compliance, medical coding, and healthcare consulting to the firm.

Damian is a founding partner of Holon Law Partners. He began his career as an officer in the Marine Corps, managing legal affairs for his command in Okinawa, Japan. In this role, he conducted investigations, assembled juries for courts martial, and advised his commander on criminal justice matters. Damian was twice selected to serve as his unit’s liaison to the Japanese government and self-defense forces. Damian later worked as a transactional attorney in New York, where he handled commercial real estate, finance, and restructuring matters. He has also participated in insider trading investigations at the SEC, worked on compliance at a private equity firm, and managed legal operations and special projects at a vertically integrated cannabis company in New Mexico. Damian draws on these diverse experiences to provide his clients with creative solutions to thorny legal issues – from negotiating commercial leases to managing complex securities offerings. In addition to practicing law, Damian volunteers as a research assistant at the University of New Mexico Medical School’s McCormick Lab – studying the microbiology of longevity and aging. When not working, he enjoys spending time with his two pit bulls and pursuing his passions for foreign languages, art, philosophy, and fitness. Damian resides in Albuquerque, New Mexico.

Jonathan F.

Trial and transactional attorney with over 30 years experience with complex business transactions and disputes.

My passion is protecting the passions of others. I have 5+ years of contract review, and all aspects of entertainment law including negotiation, mediation, intellectual property, copyright, and music licensing. I also have experience working with nonprofits, and small businesses helping with formation, dissolution, partnerships, etc. I am licensed in both Texas and California.

Nuo Jia (Lois) L.

Attorney Lois Li is a bilingual business and commercial attorney licensed in Michigan, U.S. since 2014, in Ontario, Canada since 2015, and in New York, U.S. since 2020. As an attorney licensed in two countries, Lois leads Alpine Law’s US/China/Canada practice. She is experienced in legal and contractual transactions in both English and Chinese. Lois has over six years of experience in assisting clients with business operations and legal services, and is specialized in advising companies with legal needs in International Business, Securities law, Cryptocurrency – Block chain, and Fin-Tech. Having served as both an outside and an in-house counsel, Lois worked with many startup and small businesses. With a strong understanding of core business and the ability to translate business needs into legal requirements, Lois has assisted many companies to establish policies and procedures, and drafted and negotiated employment and transaction contracts. Further licensed as a Registered Nurse since 2010, Lois specializes in healthcare law and is experienced in FDA, HIPAA, Medicare and Medicaid regulations. She has assisted many businesses in the medical and healthcare industry.

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Assignments and transmissions

Practice guidelines

In this practice guideline.

This document provides guidelines on the assignment or transmission of a trade mark application or a trade mark registration under the Trade Marks Act 2002. These guidelines do not constrain the judgement and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.

1. Introduction

Assignment or transmission of a trade mark is the process by which ownership of a registered trade mark or a trade mark application may be passed from one party to another. Sections 81 and 82 of the Trade Marks Act 2002 (“the Act”) allow for the assignment or transmission of a trade mark application or registration.

Part 16 of the Trade Marks Regulations 2003 (“the Regulations”) prescribe the requirements for a Commissioner’s Certificate and for assigning or transmitting a trade mark application or registration and incorporate regulations 143 to 146 of the Regulations.

IPONZ must be advised of a change of ownership as soon as it occurs. This is to ensure that assignments and transmissions of title that have been effected in the marketplace are entered in the register at the earliest opportunity, so that the register is an accurate reflection of the real business situation.

Change of name

Please note, if the change in owner relates solely to a change of name for the applicant requests of this nature must be made as a change of name, located under ‘maintain client’.

The Office will decline any assignment request that relates to the owner of the mark changing its name.

2. The application process

An application for a Commissioners Certificate or for an assignment or transmission of a trade mark must be submitted through the online case management facility.

Examples of acceptable documentation to support the claim can be found in our information about changing ownership . The onus is on the applicant to ensure the documentation is true and correct. 1

2.1 Filing method

An application must be submitted through our online case management facility .

IPONZ online services provide secure and immediate acknowledgement of your filing.

2.2 Prescribed fees

There is no fee for an assignment or transmission of a trade mark application or registration.

3. Assignments and transmissions

A trade mark application or registration may be assigned or transmitted in respect of all or some of the goods and services for which it is either registered or for which registration is sought. 2

An assignment or transmission may be full or partial, that is, in respect of all or only some of the goods and/or services in respect of which the trade mark is registered or registration of the trade mark is sought.

If a transmission or assignment includes all goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “full”. These requests are filed as a “change ownership” request, located under the “maintain a trade mark” option in the online services. Read about how to request for change ownership .

If a transmission or assignment includes only some of goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “partial”. These requests are filed as a “Division/Partial Change of Ownership” request, located under the “maintain a trade mark” option in the online services.

The Commissioner has no discretion in respect of the recordal of an assignment or transmission. If the application complies with the formal requirements and is supported by a document that establishes title to the trade mark, the Commissioner must record the change of ownership.

3.1 Assignment of a trade mark application

A person to whom a trade mark is assigned or transmitted must apply to the Commissioner to register their title to the application if assignment or transmission is before the actual date of registration.

An application for the assignment or transmission of a trade mark application must be submitted through the online case management facility and contain the following information: 3

The name of the assignor of the trade mark;
If the assignor has an agent, the agent’s name;
The name, address for service in New Zealand or Australia, and business or residential address of the assignee;
If the assignee has an agent, the agent’s name ;
The application number of the trade mark;
A description or representation of the trade mark;
Whether the assignment or transmission was full or partial;
The date on which the assignment or transmission became effective;
The class or classes that were assigned or transmitted;
In the case of the assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted;
A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that are proof of the assignee’s title to the trade mark; for example a Deed of Assignment [PDF, 117 KB] , Sales and Purchase Agreement, or other documentation supporting the transfer in title.

The Commissioner will, on proof of the person’s title:

accept the change of the applicant on the trade mark application;
on completing the assignment, confirm with the applicant that the assignment or transmission has been completed.

3.2 Assignment of a trade mark registration

An application for the assignment or transmission of a trade mark registration must be submitted through the online case management facility and contain the following information: 4

The registration number of the trade mark;
register the assignee as the owner of the trade mark registration in relation to the goods or services in respect of which the assignment or transmission has effect; and
on completing the assignment, confirm with the applicant that the assignment or transmission has been completed

3.3 Proof of title

An assignment of a registered trade mark requires proof of title to the satisfaction of the Commissioner.

A copy of the document of assignment or transmission is acceptable as proof of the assignee’s title to the trade mark and does not need to be certified. The Office does not accept original copies and is not able to guarantee their return to their correct owners.

The proof of title document should show the full name and address of both parties, the trade mark being transferred and should be signed and dated at least by the current owner.

Where a partial assignment or partial transmission is sought, the proof of title document should also list the goods and services that are being assigned or transmitted. This must agree with the list stated in the application to record.

Please note, the Office accepts redacted versions of documents as long as the parties, intent of the agreement and the trade marks being assigned are clear.

3.3.1 Amalgamations

Amalgamations of companies are actioned as envisaged by the Companies Act 1993. Proof of ownership can be achieved by providing to the Commissioner a copy of the Certificate of Amalgamation issued by the Registrar of Companies as evidence of the amalgamation.

3.3.2 Company mergers

Where a company merger has occurred, the applicant can provide proof of ownership with a copy of the Certificate of Merger.

3.4 Authorisation of agent

An authorisation of agent is generally not required for an agent to record an assignment or transmission on behalf of the assignee (new owner). However, the commissioner retains the discretion to require an Agent Authorisation under certain circumstances.

Where the agent wishes to be recorded as the agent on record for the assigned trade mark cases it is necessary to upload either of the following:

An authorisation of agent; or
A letter signed by the agent confirming they have been asked to represent the assignee (new owner).

Where the agent wishes to record the assignment or transmission, but does not wish to record themselves as the agent on record for the assigned trade mark cases, it is important that they remove themselves from the agent field within the record change of ownership screen in the case management facility.

3.5 Bona Vacantia

Where 5 a company has been removed from the New Zealand Companies Register and its’ trade mark registration was not assigned (whether by deed or by operation of law) to another person immediately prior to the company’s removal, the registration is prima facie bona vacantia and vests in the Crown by virtue of section 324 of the Companies Act 1993. As the owner of the trade mark registration no longer exists as a legal entity, it is not able to assign the ownership of the trade mark registration to an interested party.

Where the ownership of the trade mark has vested in the Crown, it is possible to request the Crown to transfer ownership of the registration. The Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property. In particular, The Treasury’s Legal Group advises on such requests.

To record such an assignment, IPONZ requires:

A completed application to record a transmission under s82(2) of the Act, to account for the transmission of the registration from the Company to the Crown and from the Crown to the interested party; and
Supporting documentation including copies of any documents and evidence required by Treasury.

The Treasury will advise of any documents and evidence required to action a bona vacantia request on a case by case basis. However, in relation to the assignment of a trade mark to an interested party, the following documents may be required by The Treasury:

setting out the facts about the registration;
setting out the circumstances surrounding the removal from the register without first transferring the registration; and
deposing to the effect that the Company held the registration in its own right and not on trust for any other body corporate or any other person
An application by an interested party requesting the Crown to deal with the matter as bona vacantia pursuant to section 324 of the Companies Act, together with an indemnity from the appropriate person (usually the interested party) in favour of the Crown indemnifying the Crown in respect of all or any liability that may be incurred by the Crown in respect of all actions taken in transferring the ownership of the trade mark registration.
A letter from the Companies Office certifying that the company was dissolved, the section of the Companies Act under which the company was removed from the register, the date of removal and the reference to its publication in the Gazette (if this was done). The certificate should also state that the company has not been restored to the Register.
A photocopy of the extracts from the Trade Marks Register duly certified as being a true copy of the originals.
Written consent from the Shareholder/s at the time the company was removed, consenting to the transfer of the ownership of the trade mark registration to the interested party.

Please note that the Crown is entitled to recover their costs and may require payment in advance. Any person wishing to pursue this option is expected to deal directly with The Treasury. For more information, email [email protected] .

Last updated 30 November 2017

1 See section 185 of the Trade Marks Act 2002.
2 See section 82(1) of the Trade Marks Act 2002.
3 See regulation 146 of the Trade Marks Regulations 2003.
4 See regulation 146 of the Trade Marks Regulations 2003.
5 Practice Guideline Amendment 2007/03, Intellectual Property Office Newsletter, 1 August 2007.

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Trademarks in Russia

Alexander Nesterov

Partner, Trademark Attorney

Sergey Medvedev

Partner, Trademark & Design Attorney, Ph.D., LL.M. Head of Legal Department

Legal framework

Domestic law.

What is the primary legislation governing trademarks in your jurisdiction?

The Russian Civil Code, and in particular Part IV, is the primary legislation for trademarks, among various types of intellectual property. The code governs the prosecution, exploitation, licensing and enforcement of trademark rights. Other local administrative regulations, federal laws and procedural codes support the trademark protection and enforcement regime.

International law

Which international trademark agreements has your jurisdiction signed?

Russia has signed the following international trademark agreements, which are in force:

the Paris Convention for the Protection of Industrial Property (Paris Convention) (1883);
the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) (1891);
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (1989);
the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs) (1994);
the Trademark Law Treaty (1998); and
the Singapore Treaty on the Law of Trademarks (2009).

Which government bodies regulate trademark law?

Trademark prosecution goes through the Federal Service for Intellectual Property (RUPTO). RUPTO is under the jurisdiction of the Russian Ministry of Economic Development.

The following bodies are in charge of trademark enforcement:

anti-monopoly bodies, including the Russian Federal Anti-monopoly Service;
the customs and police authorities;
the prosecutors’ offices; and
the courts, including the courts of general jurisdiction and the commercial courts.

Rights and protection

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Russia is a first-to-file country. Legal entities or individual entrepreneurs who first apply for registration of a trademark enjoy the priority right to obtain trademark registration. Therefore, it is essential to file trademark applications in Russia without delay.

It is not necessary to use the mark before applying for registration, and proof of use is not required when the trademark application is filed.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Trademark rights stem from registration in Russia. Unregistered marks or marks-in-use are not protected, unless they have obtained an official 'well-known' status under a special procedure through RUPTO.

In certain instances, unregistered marks (eg, trade dresses, logos, three-dimensional marks) can enjoy unfair competition and/or copyright protection. Trade names (known as ‘commercial designations’) can also be protected and enforced in Russia.

How are rights in unregistered marks established?

No exclusive rights are given to unregistered mark users. Rights available against unfair competition or copyright infringement are usually established through prior, long-standing use, consumers’ association and reputation. Trade names must be distinctive and known amongst customers within a certain territory of use.

Are any special rights and protections afforded to owners of well-known and famous marks?

There is a special procedure for the recognition of trademarks as well known. Unlike in many other countries, in Russia a trademark is not granted well-known status as a result of court proceedings and litigation. In order for the mark to be considered a well-known trademark, a request must be filed with RUPTO.

A well-known trademark will generally be granted the same legal protection as an ordinary trademark. Nevertheless, a well-known trademark also provides its owner with the following important advantages:

the legal protection of the mark is not time-limited;
protection extends to goods or services other than those for which the mark is recognised as well known if the third party use is likely to be associated by consumers with the owner of the well-known trademark, and may affect the owner’s legitimate interests;
protection of a well-known mark may start from the period that predates the filing of the request for recognition of the mark as well known; and
the commercial value of a well-known trademark is higher than that of an ordinary trademark.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign national trademark registrations are not recognised in Russia. However, as a signatory to the Madrid Agreement and the Madrid Protocol, Russia grants protection to trademarks registered under the Madrid system.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

As Russia is a first-to-file jurisdiction, trademark registration is of the utmost importance for its owner. Generally, trademark registration provides the registrant (trademark owner) with the legal capacity of trademark use, disposal (eg, licensing) and enforcement. Trademark registration can afford other benefits, such as customs recordal. Trademark registration may prevent a similar/identical mark from being registered in the name of a third party.

Who may register trademarks?

Legal entities or individual entrepreneurs may register trademarks.

What marks are registrable (including any non-traditional marks)?

Any designations, including – but not limited to – verbal, pictorial, combined, three-dimensional ones, and other marks or their combinations, may be registered as trademarks. A trademark may be registered in any colour or colour combination, or just in black and white.

In addition, colour marks (either as individual colours or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion/animation marks, taste marks and other non-traditional marks may be registered in Russia, but their registrability depends on their distinctiveness, which may be:

inherent, deriving from the distinctive features of the mark; or
acquired, through intensive use in Russia.

Can a mark acquire distinctiveness through use?

Registration of a mark that is lacking distinctiveness is not permitted. However, it is possible to obtain trademark registration based on the acquired distinctiveness of the mark through its intensive (pre-filing) use in Russia.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Examination of trademark applications consists of a formal examination and, thereafter, a substantive examination based on absolute and relative grounds allowing to determine whether the mark filed is inherently registrable, and whether it is confusingly similar to third parties’ pending applications and/or registrations.

Are collective and certification marks registrable? If so, under what conditions?

Collective marks

The law provides for registration of collective marks. A ‘collective mark’ is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise.

When filing an application for registration of a collective mark, it is imperative to submit by-laws of the collective mark containing the rules for the use of the collective mark. These rules must indicate the name of the association entitled to register the mark in its name, the list of enterprises entitled to use the mark, the purpose of registration of the mark, the list of goods and description of their common characteristics (relating to quality or otherwise), the conditions of use of the mark and the sanctions for violation of such rules.

The names of the enterprises entitled to use the mark and an extract from the rules relating to the common characteristics of the goods for which the mark is registered will be mentioned in the publication of registration of the collective mark in the RUPTO’s Official Bulletin .

The registration holder must inform the RUPTO of any amendment to the rules of use of the mark. Any interested person may apply to the Russian IP Court for the total or partial cancellation of the registration of a collective mark if the mark is used in relation to goods not having common qualitative or other common characteristics.

Collective marks cannot be assigned or licensed to third parties.

Collective marks and applications for the registration of a collective mark may be converted respectively into trademarks or trademark applications.

Certification marks

Certification marks may also be registered. However, the registration procedure for this type of marks is quite different from that used for trademarks.

In particular, a legal entity that created its own voluntary system of certification is entitled to get registered both the system and the certification mark identifying this system. The registration can be implemented by way of filing an application with the Russian Federal Service for State Standardisation.

Under the existing rules, a certification mark must be distinctive and visually perceivable. Trademarks may not be used as certification marks. However, a certification mark can be registered as a trademark if it meets the general registrability requirements and is not in conflict with third parties’ rights.

Registered certification marks are entered into a special state register, which exists separately from the RUPTO Register of Trademarks.

Filing and registration

Filing procedure.

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Foreign applicants must be represented by a Russian trademark attorney registered with the RUPTO. Therefore, in order for an application to be filed in the name of an entity residing outside Russia, such entity must appoint a Russian trademark agent to represent the company in all trademark prosecution proceedings.

The power of attorney can be submitted independently from the trademark application, but filing it later may delay the examination. That said, there are neither strict deadlines for filing the power of attorney with the RUPTO, nor a late filing fee.

A power of attorney should be issued by the applicant and signed by the duly authorised person with an indication of that person’s name and position (title). The date and place of signature should be indicated as well.

Neither notarisation nor legalisation of the power of attorneys is required.

What information and documentation must be submitted in a trademark registration application?

The following information and documentation shall be included in the trademark application:

the applicant’s name and address;
a list of goods and/or services (in accordance with the Nice Classification) for which a trademark is to be registered. A class heading does not automatically protect all the goods/services included in the corresponding class;
one electronic print-out of the trademark of good quality;
the power of attorney (although as noted above, the power of attorney can be submitted after the trademark application); and
a certified copy of the first (home) application (in case of a priority claim under the Paris Convention).

What rules govern the representation of the mark in the application?

The representation of the mark in the application is governed by Decree 482/2015 of the Ministry of Economic Development.

Are multi-class applications allowed?

Multi-class trademark applications are allowed.

Is electronic filing available?

Electronic filing is available. In case of non-electronic filing, the official fees increase by 30%.

What are the application fees?

Formal examination (in one class) is RUB2,450 and RUB700 for each additional class over five.

Substantive examination (in one class) is RUB8,050 and RUB1,750 for each additional class over one.

How are priority rights claimed?

A priority claim made under the Paris Convention must be accompanied by a certified copy of the first (home) application. The filing particulars should correspond to those stated in the home application. The home application can be submitted after filing an application under the Paris Convention with the RUPTO, but no later than three months after filing with the RUPTO. This term cannot be extended. Split-priority is not possible in Russia.

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Word, graphic and combined trademark searches are available through the RUPTO. The searches are not required before filing, but are strongly recommended in order to determine the availability and registrability of designations.

The official fee for a standard one-week word search is RUB14,160 for one class and RUB3,540 for each additional class.

Examination

What factors does the authority consider in its examination of the application?

The application process involves a formal examination followed by a substantive examination.

The formal examination is conducted within a month of filing. The examiner checks both the presence in the application of the requested documents and their compliance with the established requirements. If all formal requirements are met, then the substantive examination will start. Otherwise, the application will be rejected.

Does the authority check for relative grounds for refusal (eg, through searches)?

A trademark application may be rejected either based on absolute or relative grounds, or both on absolute and relative grounds.

The relative grounds for refusal include:

identity or similarity to the extent of confusion with prior trademarks (both registrations or applications) owned by third parties in relation to similar goods or services;
identity or similarity to the extent of confusion with well-known marks; and
identity or similarity to the extent of confusion with third parties’ industrial designs, appellations of origin, company names or commercial designations.

A trademark may also be refused protection if it incorporates, as elements of the trademark, protected distinguishing features of other parties (and confusingly similar signs), as well as copyrighted works owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons and industrial designs owned by third parties.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Following the substantive examination, the applicant is notified of any shortcomings, along with an invitation to submit arguments and proofs to remedy the issues identified. The examiner will take the applicant’s arguments into account when a decision is taken if these arguments are submitted within six months of the issuance of the said notification.

Can rejected applications be appealed? If so, what procedures apply?

An applicant may appeal any decision by the RUPTO with the Chamber of Patent Disputes of the RUPTO within four months of the decision issuance. The chamber’s decision may be further appealed to the Russian IP Court within three months.

Registration

When does a trademark registration formally come into effect?

A trademark registration becomes effective within one month of payment of the registration fee.

What is the term of protection and how can a registration be renewed?

Trademark registrations are valid for 10 years from the date of filing of the application. Registrations can be renewed an unlimited number of times and each time for a 10-year period.

What registration fees apply?

The official fee for registration is RUB11,200 and RUB700 for each additional class over five; the official fee for issuance of the trademark certificate is RUB1,400.

What is the usual timeframe from filing to registration?

The timeframe from filing to registration is typically eight to 10 months.

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

There is no opposition system in Russia with respect to pending applications. However, the law provides for the following procedure:

the RUPTO should publish information on all trademark applications;
Third parties have the right to review all trademark documents on file and not only those included in the original trademark applications’ filings; and
Third parties have the right to submit to the RUPTO their observations against pending trademark applications before any official action is taken.

As examiners may take into account these observations during their examinations of any applications, these letters may be effective ways to ensure that prior rights are taken into consideration.

What is the usual timeframe for opposition proceedings?

An invalidation action against a trademark based on prior rights can be brought. Specifically, within five years of publication of the information on trademark registration in the RUPTO’s Official Bulletin , the owner of prior trademark rights has an opportunity to file an invalidation action against the trademark registration with the Chamber of Patent Disputes of the RUPTO. In case of such an invalidation action, the trademark owner is notified accordingly and both parties are invited to attend hearings to consider the matter. Following the hearings, the Chamber of Patent Disputes of the RUPTO makes a decision – either:

rejecting the invalidation action and leaving the trademark in force; or
invalidating the mark in full or partially.

This procedure can take three to four months.

Are opposition decisions subject to appeal? If so, what procedures apply?

An invalidation decision from the Chamber of Patent Disputes of the RUPTO may be appealed within three months to the Russian IP Court.

Removal from register

Non-use cancellation.

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Any interested party may request the cancellation of a mark for non-use. A non-use action can be brought to the Russian IP Court, provided that the mark has not been used for three consecutive years preceding the established pre-trial procedure as outlined below.

Prior to filing a non-use claim, a party that is having a legitimate interest must send a letter to the trademark owner asking the latter either to surrender its trademark rights through the RUPTO or to assign the mark at issue to the claimant. The trademark owner has two statutory months to perform one of the options. If it fails to do so, the claimant has 30 days (following the expiration of the two-month period) to file the trademark non-use lawsuit with the Russian IP Court.

During the trial, the claimant must demonstrate a legitimate interest over the cancellation, while the trademark owner (respondent) must show use of the litigious mark by disclosing relevant documentary evidence. If the claimant succeeds, the trademark registration will be cancelled from the effective date of the decision made by the Russian IP Court.

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration may be invalidated by a decision of the Chamber of Patent Disputes of the RUPTO based on either absolute grounds (eg, misleading, lack of distinctiveness) or relative grounds (eg, prior rights).

Who may file a request for revocation and what is the statute of limitations for filing a request?

An invalidation request may be filed by any interested party with the Chamber of Patent Disputes of the RUPTO. A request based on absolute grounds may be filed during the whole period of validity of the mark, and a request based on prior rights (ie, relative grounds) may be filed during five years following the publication date.

What are the evidentiary and procedural requirements for revocation proceedings?

The evidentiary requirements depend on the grounds for invalidation.

What is the appeal procedure for cancellations or revocations?

A decision of the Chamber of Patent Disputes of the RUPTO may be appealed to the Russian IP Court. The statutory term for appeal is three months.

In order to appeal, it is necessary to file a well-grounded civil lawsuit by submitting relevant arguments contesting the decision of the Chamber of Patent Disputes of the RUPTO. The Russian IP Court usually rejects new pieces of evidence that have not been submitted to the Chamber of Patent Disputes of the RUPTO, and limits its consideration to the documents/materials in the case file.

Unless further appealed, the duration of the trial with the Russian IP Court is typically three to five months.

What is the procedure for surrendering a trademark registration?

A voluntary trademark cancellation is possible; the mark owner must file the appropriate request directly with the RUPTO.

Enforcement

Jurisdiction.

Which courts are empowered to hear trademark disputes?

Trademark infringement disputes are generally heard by commercial courts of first instance located in the constituent parts of the Russian Federation. Their decisions may be appealed to the competent appellate courts. Further appeals (cassations) go to the Russian IP Court and the Economic Board of the Russian Supreme Court. A final, supervision appeal, if accepted, may be considered by the Russian Supreme Court, which is entitled to review and ascertain whether there is substantial breach in law enforcement.

Where a defendant is neither a business entity nor an individual entrepreneur, a court of general jurisdiction shall be chosen as the forum.

Trademark non-use disputes fall under the exclusive jurisdiction of the Russian IP Court, which hears such disputes on the merits in the first instance, while the Presidium of the Russian IP Court hears cassation appeals as the second instance court. Supervision appeals on such category of disputes may also be filed to the Economic Board of the Russian Supreme Court.

Trademark-related disputes may be a matter of unfair competition, which is prohibited in Russia. For example, the unfair acquisition and use of trademark rights is not permitted, and such issue may be considered by the Russian Federal Anti-monopoly Service, its territorial divisions, and/or competent court.

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Russian trademark enforcement system is quite effective and well developed. Infringement of trademark rights may primarily be prosecuted through civil, administrative and criminal proceedings. A special quasi-judicial procedure based on unfair competition is also available. Lastly, cease-and-desist or demand letters have become a popular and obligatory pre-judicial remedy for companies wishing to sue infringers in court and claim damages or monetary compensation.

Civil proceedings

In the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:

injunctive relief (preliminary and permanent injunctions);
monetary relief (damages or monetary compensation);
seizure and destruction of counterfeit goods and related equipment/materials; and
publication of the court order.

Civil proceedings begin with a statement of claims (lawsuit), which is to be filed with the competent court. Usually, the residence/location of the defendant will establish the jurisdiction.

Russia does not support a discovery system; therefore, all evidence must be collected and secured in advance of the lawsuit. If it is not possible to obtain certain evidence from the infringer before the action, or the latter refused to disclose the evidence, the plaintiff may discover the evidence through the agency of the court during litigation.

Each party to a civil action is obliged to prove the asserted facts:

the plaintiff needs to prove that it is the registered trademark owner or registered exclusive licensee, and the defendant unlawfully uses the litigious trademark; and
the defendant needs to prove that there are legitimate grounds for trademark use that exempt it from liability.

The duration of civil proceedings will vary depending on the specificity of the case at issue. Typically, the decision of the first-instance court may be obtained within six to nine months, unless the infringer appeals the decision.

Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues.

Administrative proceedings

In accordance with the applicable (administrative) law, the unlawful use of a trademark shall entail an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.

Administrative proceedings usually begin with a complaint, which the trademark owner must file with the police or customs authorities, so that they can take action against the infringer. Accordingly, the Police or Customs will be the plaintiff, while the infringer will be the defendant in such type of action. In the course of administrative proceedings, the trademark owner may be engaged as an injured (third) party.

An administrative action may take three to five months, unless the infringer appeals the decision.

Practically, an administrative procedure proves to be the most efficient and viable enforcement option to stop the importation of counterfeit goods into Russia. This measure is also applied when small stores offer for sale fake products on the internal market.

Criminal proceedings

The illegal use of a trademark may also lead to criminal prosecution.

In accordance with the applicable (criminal) law, the unlawful use of a trademark shall entail criminal liability only in the event that the infringer’s illegal activities cause substantial damages, or if trademark infringement is repeated.

The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment. In the course of a criminal procedure, the trademark owner is also entitled to file a civil lawsuit to recover damages.

Criminal proceedings vary tremendously in length, but often last one to two years to reach a first-instance decision.

In practice, the criminal procedure is used against large-scale counterfeit operations or gross infringers that manufacture and distribute counterfeit goods in large quantities all over the country.

Unfair competition actions

Trademark infringement may constitute an act of unfair competition. Passing off, as well as imitation of trade dress, are also treated as unfair behaviour, which may be prosecuted.

The Russian Federal Anti-monopoly Service, as well as its territorial divisions, are empowered to consider disputes related to unfair competition through a special quasi-judicial procedure.

This type of procedure starts on the basis of a complaint from the injured party (ie, trademark owner or its local distributor). Should the action on unfair competition be eventually successful, the respondent (infringer) would be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.

This procedure usually takes five to 10 months, although it can be longer if the binding order or decision of the Russian Federal Anti-monopoly Service/its territorial division is appealed in court.

Cease-and-desist letters

Sending a cease-and-desist or demand letter has become a pre-requisite to a court action in certain instances. In particular, a trademark owner will not be able to claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.

The infringer has 30 days to respond to the cease-and-desist letter. The infringer’s failure to respond or refusal to comply with the terms of the letter provides the trademark owner with a legal standing to sue and claim monetary relief in court.

Sending a demand letter to the alleged infringer claiming a voluntary cessation of trademark infringement may be the easiest and the most effective out-of-court enforcement option in many situations.

Who can file a trademark infringement action?

Generally, the valid registrant (ie, trademark owner), its registered assignee or registered exclusive licensee is entitled to file trademark infringement actions, provided that their rights and legitimate interests are affected by the unlawful/unauthorised trademark use. Non-exclusive licensees, distributors or other authorised trademark users do not have the same privilege.

What is the statute of limitations for filing infringement actions?

The general statutory period of limitations for filing a trademark infringement action is three years from the date when the claimant became or should have become aware of the infringement. The same period applies to the procedure for the execution of the effective court decision concerning the trademark infringement matter.

What is the usual timeframe for infringement actions?

Please see the section on actions above.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Preliminary and permanent injunctive reliefs are generally available and may be granted in trademark infringement disputes.

Preliminary injunctive relief will be awarded where the claimant can demonstrate that failure to stop the infringement will lead to substantial damages and/or make any subsequent court order unenforceable.

In a trademark infringement matter involving unauthorised domain name registration and use, a special pre-trial procedure exists for obtaining temporary restraining order through a domain registrar. This pre-trial security measure is aimed at ‘locking’ the conflicting domain name; the pre-trial measure is valid for 14 days to enable trademark owner to file complaint with the competent court, provided that the mark owner gives a warranty for indemnification in the complaint.

Permanent injunctive relief will be granted where a claimant can prove the trademark infringement. A plaintiff must typically provide evidence of the following four elements:

the defendant used the mark without authorisation of the trademark owner;
the mark used by the defendant is identical or confusingly similar to the owner’s mark;
the disputed mark is used in connection with goods or services similar to those for which the owner’s mark is registered; and
this creates a likelihood of confusion.

Where the plaintiff fails to prove one of these elements, the court will not make a finding of trademark infringement and, accordingly, will not grant the injunctive relief.

Evidence that may be submitted to prove trademark infringement include:

bills of ladings, contracts and other sale and purchase confirmation documents;
samples of counterfeit or grey market goods;
expert opinions and public survey results;
private detective reports and notary public protocols; and
audio and video records.

Evidence needs to meet the requirements of relevance and be admitted for consideration.

Essentially, when claiming trademark infringement, the plaintiff must act in good faith. Abuse of rights shall lead to the dismissal of the case.

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In addition to preliminary and permanent injunctive reliefs, the owners of the infringed mark can claim the following monetary relief:

damages, including actual damages or lost profits; or
a fixed amount ranging between RUB10, 000 and RUB5 million;
double the price of the counterfeit goods; or
double the cost of the trademark licence.

The trademark owner can also seek and obtain:

the removal of the trademarks from documents, advertisements and signboards;
the seizure and destruction of the counterfeit goods; and
the publication of the court order.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Russian customs authorities are required to suspend the release of products discovered in the course of customs operations that they suspect infringe trademark rights registered in the Russian Customs IP Register.

Where products are suspended, the customs authorities must immediately give notice of the interception to the trademark owner by sending the latter an official notice of suspension along with a presentation of the facts and pictures of the seized products. Upon receipt of the said notice, the trademark owner may inspect the products and decide whether to initiate (in case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the statutory period.

The statutory period is 10 working days, which may be extended by another 10 working days if the mark owner files a motivated request reasoned by a corresponding enforcement action. Within this period (ie, 20 working days), the trademark owner may also request samples of the products seized.

In case of trademark infringement, the mark owner can enforce its rights by applying for various enforcement actions. In practice, administrative proceedings will be the most efficient enforcement option against the importation of counterfeits, while civil proceedings will be the only viable enforcement measure against parallel imports.

What defences are available to infringers?

An alleged infringer may use the following material defences:

the mark used is not protected with regard to the goods at issue;
the sign at issue was not used in a trademark sense;
there is no similarity and likelihood of confusion between the conflicting marks;
there is no similarity between the conflicting goods and the goods as to which the respective mark is registered;
the defendant has a licence and/or the consent of the owner to use the mark;
the plaintiff has no priority right over the conflicting designation (eg, domain name);
the plaintiff’s trademark rights are exhausted; or
the plaintiff is abusing its rights.

In addition, the defendant can raise the following procedural defences:

the period of limitation applies;
the plaintiff chose the incorrect jurisdiction or forum; or
the plaintiff filed a lawsuit against the wrong defendant.

Further, the defendant can initiate an invalidation action against the disputed trademark. An invalidation action is considered by the Chamber of Patent Disputes of the RUPTO and such action will not stay the infringement proceedings. In other words, the trademark infringement action and the invalidation action will be independent from each other. Otherwise, the defendant can commence an unfair competition action based on unfair acquisition and use of the disputed trademark. Last but not least, the defendant can file an action for trademark non-use with the Russian IP Court.

What is the appeal procedure for infringement decisions?

The appeal venues described below are generally available in trademark infringement matters:

appellate courts review existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
the Russian IP Court, acting as the first cassation appeal court, hears cases on the existing case records, but does not re-evaluate the evidence or facts;
the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Moscow City Court) review the existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
the presidium of the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Presidium of the Moscow City Court), acting as the first cassation appeal court, hear cases on the existing case records and do not re-evaluate the evidence/facts;

Assignment and licensing

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

A trademark can be assigned in whole or in part, with or without goodwill, and with certain jurisdictional restrictions (for international trademark registrations). Trademark applications can also be assigned during the examination process.

Trademark assignments are deemed to be entire transfers or sales of the exclusive (trademark) rights. Therefore, trademark assignment agreements cannot contain any restrictions or limitations on further trademark exploitation.

An assignment in relation to trademarks may not be possible where:

the assignor wants to retain other confusingly similar trademark registrations, designs and/or company names; or
the assignor wants to keep in its name the trademark registration in connection with certain goods or services similar to the assigned ones.

There may be other grounds for misrepresentation or risks of confusion in the context of trademark assignments.

An assignment of trademark rights must be made in writing and signed by both parties. The notarisation and legalisation of the deed of assignment or trademark assignment agreement is not required. However, it is mandatory to register the assignment of a trademark, whether it is registered nationally or internationally.

Failure to register the trademark assignment will result in the assignment being invalid against third parties.

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademarks can be licensed in whole or in part (under certain circumstances), with or without goodwill, and with jurisdictional restrictions (for international trademark registrations). Pending marks or trademark applications cannot be licensed.

Licensing of trademarks can be done on a sole, exclusive or non-exclusive basis. Trademark licences must also provide a term (the default term is five years) and specify the territory (the default territory is the whole of Russia) covered by the licence.

Trademarks can be licensed either in connection with all goods or services covered by the relevant trademark registrations, or in connection with specific goods or services covered by the trademark registrations. Goods and services that are not indicated in the trademark registrations may not be licensed.

A licence agreement must be made in writing and signed by both parties. The notarisation and legalisation of the licence agreement is not required. However, it is mandatory to register the licence of a trademark, whether it is registered nationally or internationally.

Failure to register a trademark licence will result in the licence being invalid against third parties

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The main provisions that must be included in a trademark licence are the following:

details of the parties (ie, company names and addresses of licensor and licensee, as well as their authorised officers/signees);
subject matter of the licence (ie, the trademark registration number);
details of the licensed goods or services subject to the licensed trademark registration (goods and services must match those indicated in trademark registration or certificate);
type of licence (ie, whether it is sole, exclusive or non-exclusive);
licensable rights (ie, the specifically permitted use of the licensed trademark);
compensation clause, (this is especially applicable to a licence arrangement between business entities or companies);
licensed territory (the default territory is the whole of Russia);
licensed term (the default term is five years);
sub-licence clause (ie, whether sub-licensing is permitted automatically or whether it is subject to the consent of the licensor); and
‘termination for convenience’ clause (ie, whether the licensor and licensee have the right to unilaterally terminate the licence).

Other provisions may be added depending on the contract structure and the parties’ negotiations.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Security interests over trademarks are usually taken in the form of a pledge or a fixed charge. Trademark security interests are currently the most common pledges or charges in Russia (out of other IP subject matters).

A security agreement must be in writing and signed by both parties. The notarisation and legalisation of the security agreement is not required. However, to be able to enforce the contacted security interest, the trademark pledge or charge over trademark, whether protected under a national or international registration, must be registered.

Failure to register the trademark security interest will result in the security interest being invalid against third parties.

In practice, judicial and non-judicial foreclosures are used to enforce trademark security interests.

Related rights

Related ip rights.

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, trademarks can be protected under other IP rights, including by virtue of:

copyright law (eg, logos);
industrial design patent law (eg, three-dimensional marks); and
unfair competition law (eg, trade dresses).

The existence of one form of IP protection does not exclude the other and, therefore, dual or even triple legal protection is possible.

Online issues

Trademarks online and domain names.

What regime governs the protection of trademarks online and domain names?

Trademark rights are afforded protection online as well. Therefore, any unauthorised use of a trademark in a domain name or on a website constitutes trademark infringement.

Alternative dispute resolution (ADR) systems, such as the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension System (URS), do not apply to infringement matters involving ‘.ru’ domain names. Thus, domain name cancellations or transfers are usually achieved based on trademark infringement litigation initiated in local courts.

When the competent court makes a trademark infringement finding, the involved domain registrar has to cancel the disputed domain name registration; the trademark owner has priority (‘preemptive right’) to register the domain name in its own name within the statutory period.

Even though the UDRP does not apply to ‘.ru’ domain name disputes, the Russian courts support the international principle of ‘unfair competition repression’ and apply the UDRP’s three-prong test through the implementation of Article 10 bis of the Paris Convention for the Protection of Industrial Property. In other words, a trademark owner must prove the following elements in court:

the domain name is identical or confusingly similar to a trademark in which the plaintiff has rights;
the defendant has no rights or legitimate interests in respect of the domain name; and
the defendant’s domain name has been registered and is being used in bad faith.

It will typically take three to five months to obtain a first-instance court decision in a trademark infringement case involving an unauthorised domain name registration and use.

Law stated date

Correct as of November 23 2017.

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FAQs - Recording Trademark Assignments in Turkey

Is there any requirement for disclosing or declaring a consideration in assignment agreements.

No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording an assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there are more than one trademark owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights.

In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the trademark registry.

Is the recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry

Is the original of Assignment Agreement required?

Not actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

Is it possible to record Assignment Agreement comprising multiple trademark cases by one request for assignment at TURKPATENT ?

Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office.

Is Power of Attorney required for recording an assignment in the trademark registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.

Are official fees payable in order to record a Trademark Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one trademark within Assignment, official fees should be paid for each case separately.

Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish trademark application or registration numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.

Can a pending trademark application be assigned?

Yes, a pending trademark application can be assigned; there is no requirement for grant or registration of application for assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of trademark should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, i.e. Courts, chambers of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.

If a trademark registration or trademark application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a trademark.

If a trademark or trademark application pledged, is it still possible to assign the rights thereon?

Pledge is not an obstacle to assign the rights of a trademark.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

Can a registered or applied-for trademark be assigned partially?

Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.

In the case of a partial assignment, is there any specific requirement for Assignment Agreement?

Yes, it is obligatory to indicate class numbers and goods and services subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.

In the case of a partial assignment, how does TURKPATENT handle recordal of the assigned part of trademark registration or application?

TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.

In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?

No, it is not obligatory to assign same or confusingly similar goods and services.

If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?

Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol if they are not filed by means of International Bureau of WIPO .

Do you have further questions about assignments for trademarks in Turkey? Please contact us . We will answer your questions as soon as possible.

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Latah County Clerk in Moscow, Idaho

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Potlatch City Clerk 6th Street, Potlatch, ID - 14.0 miles The City of Potlatch, governed by a Mayor-Council system, offers amenities like the Scenic 6 RV Park, a Local Business Directory, and Visitor Information.

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Miriam and ira d. wallach art gallery.

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Exhibitions

Moscow: City, Spectacle, Capital of Photography

April 30–june 21, 2003.

Moscow has been a powerful magnet for many Russian photographers of the 20th century. Moscow: City, Spectacle, Capital of Photography presents the work of 31 photographers, whose images have defined the visual experience of Moscow from the 1920s to the present. Diverse in form and strategy, the 90 photographs chosen for the exhibition trace the history of Russian documentary photography and offer insight into individual practices. From Aleksandr Rodchenko's constructivist visions and Evgenii Khaldei's humanist landscapes to Igor Moukhin's scenes of urban spectacle and alienation in the works of Russia's key 20th-century photographers, Moscow ventures beyond the expected image as a site of famous landmarks, architectural treasures and dramatic lifestyles.

Early 20th-century photographers Boris Ignatovich and Arkadii Shaikhet saw themselves in the vanguard of an emerging mass-media culture, defining with their cameras the visual experience of Soviet modernity. For nearly 70 years, Soviet photography was assigned the duty of maintaining the ideological rigidity of the Soviet State. Yet, as examples of the work of Iakov Khalip, Anatolii Egorov, Mikhail Savin, and Mark Markov-Grinberg show, Soviet photographic practices were much more complex than has been previously acknowledged. The works of these photographers remain intensely compelling to a modernist eye.

Contemporary Russian photographers, such as Lev Melikhov, Valerii Stigneev and Sergei Leontiev, engage with the legacy of the Soviet documentary photography. But for them the documentary is a complex and multivalent genre, which incorporates subjectivity, ambiguity and reflexivity and comments on social and cultural issues without losing sight of the position from which that commentary is made. In the recent photographs by Vladimir Kupriyanov, Igor Moukhin, Anna Gorunova and Pakito Infante, the "real" space of Moscow is replaced by an imaginary and optical spaces of virtuality.

The works in the exhibition are on loan from Moscow's Cultural Center Dom, and many are being shown outside Russia for the first time. In conjunction with the exhibition, the Wallach Art Gallery is publishing an illustrated catalogue with a scholarly essay by the exhibition curator, Nadia Michoustina, a Ph.D. candidate in Columbia University's Department of Slavic Languages. The essay presents a nuanced history of Russian photography of the 20th century, and contributes to an interpretation of extraordinary images.

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