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EXHIBIT A LIST OF TRADEMARKS
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EXHIBIT B FORM OF RECORDABLE TRADEMARK ASSIGNMENT
For good and valuable consideration, the receipt of which is hereby acknowledged, , an individual a(n) (the " Assignor ") hereby assigns to , an individual a(n) (the " Assignee ") all of the Assignor's interest in the trademarks, including the appurtenant goodwill associated with those trademark registrations and applications identified in Attachment A , and the Assignee accepts this assignment.
Each party is signing this agreement on the date stated opposite that party's signature.
Date: ________________________ | __________________________________________ |
Name: | |
NOTARIZATION: | |
Date: ________________________ | __________________________________________ |
Name: | |
NOTARIZATION: |
ATTACHMENT A [TO EXHIBIT B] INTELLECTUAL PROPERTY
Simplify the buying and selling of trademarks with a trademark assignment agreement. transfer intellectual property rights and ensure a fair and smooth transaction..
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How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.
Trademark assignments are important tools in the complicated world of intellectual property that allow trademark owners to easily transfer their ownership rights from one business to another. Trademark assignment is essential for both corporate transfers of brand assets and individual inventors wishing to safeguard their intellectual property.
The article serves as a helpful manual to assist readers in accurately navigating the formal process of trademark assignment. It goes deep into procedural details and legal requirements, producing an extensive guidebook intended to assist both people and organizations. It also emphasizes how utilizing a trademark assignment template may be extremely simple, enabling stakeholders to transfer trademark ownership and rights with confidence and efficiency.
A trademark assignment is a legally binding agreement in which the owner of a trademark (the assignor) transfers its rights to another person (the assignee) through a trademark application at the United States Patent and Trademark Office (USPTO). This transfer includes all related rights, including the ability to use, license, and enforce the trademark.
By signing a trademark assignment agreement, the assignor transfers ownership of the trademark, and the assignee gains all authority and control over it. This process makes it possible for ownership to be transferred in a clear, legal manner, providing certainty to both parties regarding their respective rights and obligations.
The legal process involved in assigning a trademark includes several key steps.
1. Drafting the assignment: Create a detailed trademark assignment agreement that specifies all of the transfer's terms and conditions. This agreement must abide by all relevant intellectual property laws and regulations.
2. Executing the assignment: After the agreement is written, both parties must execute it by the law, which may involve notarization or the presence of a third-party witness.
3. Recordation of the assignment : After execution, the assignee usually sends the agreement to the appropriate authority or patent and trademark office for trademark registration and recording, together with any necessary supporting papers. The act of formally registering or documenting the transfer of ownership of a specific object or piece of property with the relevant authorities is known as recording. Recordation ensures that the necessary legal entities formally acknowledge the transfer of ownership or rights when an assignment occurs, such as with real estate, intellectual property rights, or other assets.
Ensuring the legality and enforceability of the assignment throughout this procedure requires compliance with the legal formalities and pertinent rules.
Legal aid may be required in addition to administrative expenses when filing a trademark application. The jurisdiction, the difficulty of the task, and whether or not legal aid is retained all affect the real expenses.
The applicable trademark agency or authority, the United States Patent and Trademark Office (USPTO), often charges administrative costs for the assignment's procedure. These administrative fees can vary, although they are typically low compared to other legal procedures. Additionally, attorney costs will be included in the overall cost if legal aid is requested to prepare or evaluate the assignment agreement.
In this scenario, the free trademark assignment template provided by LegalZoom can help one get started.
Assigning ownership of a trademark involves several key steps:
1. Drafting the agreement : Start by creating an extensive trademark assignment agreement that specifies all of the transfer's terms and circumstances. Provide information on the trademark being transferred, the assignor and assignee's names and addresses, the payment for the transfer, and any guarantees or representations.
2. Reviewing and editing : Examine the written agreement closely to make sure all the material is correct and comprehensive. Make sure that all words are precisely defined and represent the objectives of both parties by making any required modifications or revisions.
3. Execution : Both the assignor and the assignee must sign the agreement after it has been finalized. To authenticate the agreement, signatures may need to be witnessed or notarized, depending on the criteria and preferences set out by law.
4. Submission : Send the signed agreement to the appropriate authorities or patent and trademark office for recording. This stage gives the assignee legal recognition as the new trademark owner and formalizes the ownership transfer.
5. Keeping records : Preserve accurate documentation of the assignment agreement, including signed copies and any contact with the office. These documents function as evidence of the transfer and may be helpful in the event of disagreements or issues about trademark ownership.
To prevent future disagreements or issues, it is essential to guarantee the completeness and quality of the information provided throughout the assignment process. Verify the information in the agreement again to make sure it is correct and reflects the goals of both parties. Stakeholders can confidently assign ownership of a trademark by carefully following these procedures.
Trademark assignment instructions provide a step-by-step guide for completing each section of the trademark assignment document. Here's a brief overview:
1. Introduction : Start by introducing the purpose and scope of the assignment. Clearly outline the parties involved (assignor and assignee) and the trademark(s) being transferred.
2. Identification of trademark : Provide detailed information about the trademark(s) being assigned, including registration numbers as issued by the World Intellectual Property Organization (WIPO), descriptions, and any associated rights or goodwill.
3. Consideration : Specify the consideration or payment for the transfer of ownership of the trademark. This may include monetary compensation, goods, services, or other valuable assets.
4. Warranties and representations : Include any warranties or representations made by the assignor regarding the validity of the trademark(s) being transferred. Ensure that these statements are accurate and comply with legal requirements.
5. Execution and signature : Clearly outline the process for executing the assignment agreement, including signature requirements for both parties. Ensure that signatures are obtained according to legal requirements.
6. Recordation : Provide instructions for recording the trademark assignment with the relevant office or authority. Include any necessary forms or documentation required for recordation.
By following these instructions, stakeholders can complete the assignment process effectively while ensuring compliance with legal requirements and protecting their rights.
If you wish to transfer ownership, the recordation of a trademark assignment with the appropriate authorities is crucial for several reasons:
Legal recognition : Recording the assignment provides legal recognition of the transfer of ownership. This formalizes the change in ownership and establishes the new trademark owner's rights in the eyes of the law.
Public notice : Recordation serves as public notice of the trademark assignment, alerting third parties to the change in ownership. This helps prevent unauthorized use or infringement of the trademark by providing clarity on who holds the rights to the mark.
Priority : Recordation establishes the priority of ownership, particularly in cases of conflicting claims or disputes. The assignee who records the assignment first typically has superior rights over subsequent claimants.
Enforceability : A recorded assignment is generally more enforceable in legal proceedings. It provides concrete evidence of the transfer of ownership, making it easier for the new trademark owner to assert their rights and defend against infringement.
Preservation of rights : Recordation helps protect the rights of the new trademark owner by ensuring that the assignment is properly documented and recognized by the relevant authorities. This safeguards against challenges to ownership and provides clarity in case of legal disputes.
The timeline for recording a trademark assignment with relevant authorities can vary depending on several factors:
Processing time : Typically, the trademark office or authority, USPTO, will have its own processing time for recording assignments. This can range from a few weeks to several months, depending on the efficiency of the office and the volume of assignments being processed.
Completeness of documentation : The completeness and accuracy of the documentation submitted with the assignment can affect processing times. Any missing or incorrect information may result in delays as the office requests additional information or clarification.
Potential delays : Delays can occur due to various reasons, such as backlog at the office, administrative errors, or unexpected issues with the assignment documentation. Additionally, if there are any challenges or disputes regarding the assignment, this can prolong the process.
Communication with authorities : Effective communication with the relevant authorities can help expedite the process. Prompt responses to any requests for information or clarification can help avoid unnecessary delays.
Overall, while there is no fixed timeline for recording an assignment, stakeholders should be prepared for potential delays and factor this into their planning. By ensuring that all documentation is complete and accurate and maintaining open communication with the authorities, stakeholders can help minimize delays and expedite the recording process.
In summary, trademark assignment holds significant importance for both individuals and businesses alike. For individuals, it provides an avenue to transfer ownership of a trademark they may have developed, allowing them to monetize their intellectual property or pass it on as part of their estate planning. For businesses, trademark assignment facilitates strategic maneuvers such as mergers, acquisitions, or rebranding efforts, enabling them to consolidate their brand portfolio or expand into new markets.
To guarantee the seamless transfer of trademark rights, minimize potential conflicts, and safeguard the integrity of the brand, it is important to adhere to legal standards and provide comprehensive documentation, regardless of the circumstances. All things considered, trademark assignment is a vital tool that helps people and companies use their intellectual property assets to their advantage for both financial benefit and a competitive advantage in the market.
To speed up the creation of your assignment document, make use of the trademark assignment template that is supplied at the top of this page. Whether you're an individual looking to safeguard your intellectual property or a company owner transferring trademark rights, our template provides an organized format for recording the assignment agreement, making the transfer procedure more accurate and straightforward.
What's a trademark assignment.
A trademark assignment is a legal transaction that involves transferring ownership rights of a trademark from one party to another. Whether you are acquiring or relinquishing trademark rights, this process establishes clear guidelines to ensure fairness and transparency in the exchange of ownership. To complete a trademark assignment, you'll need to provide the following information:
The procedure for trademark assignment involves transferring ownership rights of a trademark from one party to another through a legally binding agreement. This typically includes drafting a trademark assignment agreement, identifying the current owner and the new owner, specifying the trademark(s) being transferred, determining the consideration for the transfer, obtaining signatures from both parties, and recording the assignment with the relevant office or authority.
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Morris E. Turek | (314) 749-4059 | [email protected]
Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?
A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another. In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public. Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.
Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee. In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment. This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.
If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO). This should be done electronically using the USPTO’s Assignment Center System . You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal). It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark. In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.
Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark. If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .
In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.
I’m experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below. I look forward to hearing from you soon.
How to transfer trademark ownership: trademark assignment, how do you transfer ownership of a trademark.
To change the owner of a federal trademark registration or application, a trademark assignment should be signed and recorded with the USPTO. A trademark assignment is a document signed by the original owner (“assignor”) that transfers ownership of the trademark to a new owner (“assignee”). In most cases, the new owner does not need to sign the document because only the assignor signs the trademark assignment to transfer trademark rights. The USPTO offers a helpful online resource on trademark assignments .
Need to transfer trademark ownership? Email Vic at [email protected] or call (949) 223-9623 to see how we can help transfer trademarks.
To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings . The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks .
For multiple marks, we can draft a single trademark assignment to be signed only once. The executed trademark assignment must then be properly recorded against each trademark to be transferred. Contact us to obtain a precise quote for transferring a trademark filing.
It is important to specify the details of the trademark(s) to be transferred. The trademark assignment should include:
If multiple marks are involved, a single trademark assignment may include a schedule that lists all the trademarks to be transferred.
Keep in mind that a license to use a trademark is not the same as transferring ownership of the mark. In a trademark license, the licensor still owns the mark.
Trademark assignments can get tricky in Intent-To-Use trademark applications . That’s because an ITU application is generally not transferable before the mark has been used. The USPTO wants to see the original applicant submit evidence of use of the mark by filing a Statement of Use / Amendment to Allege Use before filing a trademark assignment. Certain exceptions to this rule include the transfer of an entire line of business (e.g., business of the original trademark owner is acquired by a new owner). In these special circumstances, a trademark assignment filed before the mark has been used might be acceptable if the assignment contains special language to effect a proper transfer of an ITU mark.
An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner to the new owner. This will enable the public to search and recognize the new trademark owner. If the new trademark owner plans to file new trademark applications for marks similar to the assigned trademark, then it would certainly help to show that the registered trademark now belongs to the new owner.
The USPTO enables the public to search trademark assignment records online by reel/frame number, serial number, registration number, international registration number, assignor name, assignee name, correspondent name, applicant name or domestic representative.
Should you transfer a trademark regisration first, and then file the renewal of behalf of the new owner? Or, renew first on behalf of the old owner, and transfer the registered trademark? It all depends on whether the old owner or new owner is making use of the mark at the time the renewal is filed.
The assignee should be diligent in tracking any deadlines for responding to outstanding Office Actions and renewing any registered marks. Typically, this can be forwarded to an experienced IP firm who will easily docket all relevant deadlines of the transferred trademark filings.
A transferred trademark application or registration should not be regarded in the same way as a transferred patent, which does not impose an obligation on the patent owner to use the patent. Trademark owners have an ongoing obligation to use the transferred trademark on the pertinent goods or services identified in the trademark filings. Ceasing the use of the marks on the relevant goods or services could jeopardize rights in the transferred marks.
If the trademark owner is the same entity with a different name, the trademark owner should record a name change with the USPTO. An assignment cover sheet should be added to a copy of the corporate documents reflecting the name change, which will all be submitted to the USPTO. Be careful not to think of a different entity as merely a name change. For example, if your old company was an LLC and you formed a new corporation, those are two different entities. A trademark assignment would be required to transfer trademarks from the LLC to the new corporation.
An experienced trademark attorney can help you properly transfer a trademark filing. Email me at [email protected] or call (949) 223-9623 to get started on transferring ownership of a trademark.
If you enjoyed this article, you might appreciate my list of recommended IP resources .
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We help you transfer ownership of a trademark., what is trademark assignment.
A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner. To record an assignment or name change, the trademark owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment. A name change does not require that the filer submit proof of name change.
Anytime a trademark changes ownership, you should record an assignment agreement. For example, an assignment should be recorded if you sell your trademark, if you gift your trademark to someone else, or if your corporate structure changes such that a new entity ends up owning the trademark rights.
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A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner.
Do i need to record an assignment if i sell my company.
Sometimes. If a company is the owner of the trademark and the company is sold, the rights provided by a Trademark Registration pass with company to a new owner by default.
If you are intending to sell a company and retain the trademark rights, either under your own name or a new company, then you should record a Trademark Assignment before the company is sold.
The government charges a fee of $100 - $200 to process a trademark assignment. If you use an attorney to file, the professional fees to prepare and file your statement of use will vary significantly based on the attorney's hourly rate.
We charge a fee of $399 per application for preparing and filing each Trademark Assignment.
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Fact Sheet: Introduction to Trademarks
Updated: December 18, 2023
The value of a trademark lies in the goodwill associated with that trademark. Goodwill is like the trademark right itself—an “intangible” asset (as distinguished from a “tangible” asset that is a physical asset that can be seen or touched, such as land, buildings, machinery, inventory, and cash) that is part of the value of the trademark owner’s business. It can be quite difficult to assign a monetary value to goodwill because many variables must be considered, such as the duration and extent to which the owner has used the trademark in business.
Some of the most common approaches to/methods of valuing a trademark are: (a) the income approach, which assigns a value to a trademark based on past and expected future profits of the goods/services associated with the trademark; (b) the market approach, which assigns a value based on comparisons of transactions (such as royalties, i.e., license fee rates) involving similar assets; (c) the cost approach, which assigns a value based on the cost of creating a trademark and the cost of replacing the existing trademark with a trademark of equivalent market power; and (d) the relief from royalty method, which estimates the expected royalty savings attributable to the ownership of the trademark.
Many companies specialize in the valuation of trademarks and may provide significant expertise in attributing a monetary value to a trademark.
See also Brand Valuation Fact Sheet
Yes, you can sell and/or assign (transfer) your trademark. An assignment of trademark rights can be either outright, in that it results in the total transfer of ownership of such rights from one entity to another, or (in some countries/jurisdictions) partial, resulting in the transfer of only a portion of the trademark rights.
The laws governing trademark assignments vary from one jurisdiction to another. The laws and regulations of each jurisdiction where a trademark exists should be carefully reviewed before a trademark assignment is undertaken. Failure to comply with the requirements could lead to unanticipated tax consequences or result in the invalidation of the transfer.
See also Trademark Assignments Fact Sheet
Yes. You can allow another party to use your trademark in commerce, while still retaining ownership of the mark, by entering into a license agreement with that person or entity.
Licensing of the use of trademarks facilitates merchandising, franchising, and distribution agreements, which play an important role in the way goods and services are distributed, marketed, and sold, both domestically and internationally License agreements may contain provisions governing the term (length) of the license, the territory covered by the license, the royalty the licensee must pay to the licensor for use of the trademark, whether the license must be recorded, whether the license covers all or just some of the goods or services protected by the licensed mark, whether the license is transferable or sublicensable, and whether the licensee has exclusive or sole rights to use the trademark (and if so, in which territory). Many license agreements will also have provisions permitting the licensor to control the quality of the goods or services produced or offered by the licensee under the licensed trademark, which are known as “quality control provisions.” In fact, to maintain your trademark rights in many jurisdictions it is mandatory to include quality control provisions in a trademark license agreement and, even in jurisdictions where it is not mandatory, it is always a good idea to include such provisions.
See also Trademark Licensing Fact Sheet.
Country Guides : Essential Information on Trademark Protection Worldwide Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. Membership required.
Please give us your feedback on whether this fact sheet was helpful or if you have suggestions for other fact sheet topics.
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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.
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.
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.
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.
In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.
When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.
Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.
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The two most common transactions relating to trademarks each require specific words to be effective. Trademark assignments must include “goodwill;” trademark licenses must include “quality control.” To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark. Trademarks represent the goodwill of a business, which is different from the accounting principle of goodwill listed on a balance sheet. A trademark license must include a provision by which the licensor exerts some manner of quality control over the licensee’s use of the mark. The quality control provisions can be extensive or bare-bones but must always allow the licensor to have some inspection right over the goods or services offered. The licensor must also be certain, on regular occasions, to inspect the goods or services to be sure the licensee is meeting the quality standards. While it is clear that a licensor would want quality control, a licensee should understand the benefit as well. The licensee is using a brand and should want the brand to remain strong by being properly protected with necessary quality control provisions.
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Almost anything can be a trademark if it indicates the source of your goods and services . It could be a word, slogan, design, or combination of these. It could even be a sound, a scent, or a color.
Some registered trademarks you may recognize include:
for "automobiles."
for "hot pizza pies."
for Target's "retail department store services."
You can apply to register your trademark in standard character format or special form format. The format you choose will affect the scope of protection for your trademark registration. For example, The Coca-Cola Company has registered its Coca-Cola trademark in both standard character format and special form formats, such as:
Here the trademark is registered in standard character format. This format provides the broadest protection because it protects the words themselves and is not limited to a particular font style, size, or color.
Here the trademark is registered in special form format, where the stylized lettering is a significant part of what’s protected.
Coca-Cola also registered this trademark in special form format. It includes both the stylized wording and wavy lines underneath.
This registered trademark in special form format shows the same stylized wording, but it appears on their distinctively shaped contour bottle. The design of the bottle is part of what’s protected.
Because color wasn’t claimed as a feature of any of the above trademarks, Coca-Cola can use their trademarks in any color.
Most trademarks are registered in standard character format. This format protects words, letters, numbers, or a combination of those without any limitation to a specific font style, size, color, or design. Basically, you’re getting protection for the words themselves, regardless of how they’re displayed, like with the registered word Coca-Cola.
Some other standard character format examples include:
Trademarks registered in special form format protect trademarks that are stylized , have designs or logos, or are in color. Trademark owners typically register in special form format when the stylization and design is an important part of the trademark. With this format, you’re getting protection specifically for the way the trademark looks.
The McDonald’s golden arches design is an example of a registered trademark in special form format.
The company Nike registered this trademark in special form format, combining the stylized word Nike with their swoosh logo.
The format of the trademark you apply to register affects your application filing requirements. Learn more about the two different formats of trademarks and their filing requirements .
As shown above, trademark owners can register their trademarks in different formats. Here are some additional examples highlighting how a company might register a single trademark in both standard character format and special form format.
Head & Shoulders
The Head & Shoulders trademark is owned by the Proctor & Gamble Company.
The trademark is registered in standard character format for “hair shampoo.”
The trademark is registered in special form format for “medicated hair care preparations.”
The Google trademark is owned by Google LLC.
The trademark is registered in standard character format for many goods and services including “software for accessing and searching online databases and websites,” “technical consulting services in the field of archiving of data for others in the nature of historical records and documents,” and “computer services, namely, creating cloud-based indexes of information.”
The trademark is registered in special form format for goods and services like “computer hardware” and “bill payment services.”
The Facebook trademark is owned by Facebook Inc.
The trademark is registered in standard character format for many goods and services including “social introduction, networking and dating services” and “application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management.”
The trademark is registered in special form format for many goods and services including “computer search engine software” and “application service provider (ASP) services, namely, hosting computer software applications of others.”
DISCLAIMER: References to particular trademarks, service marks, certification marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement by the U.S. government, the U.S. Department of Commerce, the U.S. Patent and Trademark Office, or any other federal agency.
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Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.
A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a "transfer of goodwill" - this is written fully as a transfer of " (1) all the property, right, title and interest in and to the Trademark including all common ...
A trademark assignment is the transfer of an owner's property rights in a given mark or marks. Such ... language of the enclosed document. An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). ...
ereby agree as follows:Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill of the ...
Confidential treatment requested under 17 C.F.R. Sections 200.80 (b) (4) and 230.406. Sample 1 Sample 2 Sample 3. Trademark Assignment. This Trademark Assignment (this "Assignment") is made effective this 4th day of May, 2011, by and between Hologic, Inc., a corporation organized and existing under the laws of the state of Delaware, and ...
Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an "assignment in gross" and could cause the ...
Due diligence. Determine authority to transfer the trademark. Execute trademark assignment agreement (What should be included in a trademark assignment form) Complete ancillary agreements necessary to give effect to trademark transfer. Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership. 1.
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382. Show all FAQs. Browse FAQs.
1. Drafting the agreement: Start by creating an extensive trademark assignment agreement that specifies all of the transfer's terms and circumstances. Provide information on the trademark being transferred, the assignor and assignee's names and addresses, the payment for the transfer, and any guarantees or representations. 2.
Trademark Assignment Agreement Template. Use our trademark assignment agreement to transfer a trademark to a new owner. A trademark assignment agreement is a written document that transfers a legally recognized word, phrase, symbol, and design (the "trademark") from the current owner (the "assignor") to the future owner (the "assignee
I'm experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059, via email at morris ...
Sample of a Trademark Assignment (PDF) Resources. Upload a Document (PDF) Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent Examining Procedure (MPEP) Trademark Manual of Examining Procedures (TMEP) Assignment Search ; Tutorial. Assignment Center Patent Training Guide (PDF) Assignment Center Trademark Training Guide (PDF)
To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings. The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks. For multiple marks, we can draft a single ...
A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner. To record an assignment or name change, the trademark owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment. A name change does not require that the filer ...
Yes, you can sell and/or assign (transfer) your trademark. An assignment of trademark rights can be either outright, in that it results in the total transfer of ownership of such rights from one entity to another, or (in some countries/jurisdictions) partial, resulting in the transfer of only a portion of the trademark rights. The laws ...
Sample 1 Sample 2. Assignment of Trademark. On the Effective Date, USGN shall deliver to Kidde an assignment agreement, in the form of Exhibit G, whereby USGN shall, subject to the terms of this Agreement, assign to Kidde all of its right, title and interest in the Trademark, including all goodwill associated therewith (the "Trademark ...
Updated May 10, 2024. ~ 10 pages. PDF. 3.7K downloads. A trademark assignment agreement provides a record of ownership and function similar to a digital version of a bill of sale. By using a trademark assignment agreement, you can transfer the property rights in a mark or multiple marks. Create your legally binding document on Lawrina, submit ...
For additional information on filing a trademark assignment or documents affecting title, please call the Assignment Division between 8:30 a.m. and 5 p.m. Eastern Time on normal business days at 703-308-9723. The USPTO Public Search Facility maintains assignment ownership records. The Public Search Facility, located on the first floor of the ...
Assignment. Assignor hereby irrevocably assigns, grants, and transfers to Assignee all rights, title, and interest in and to the Mark in perpetuity. Assignor further authorizes the United States Patent and Trademark Office and all other agencies in jurisdictions outside the United States to record the transfer of the registration.
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 ...
The two most common transactions relating to trademarks each require specific words to be effective. Trademark assignments must include "goodwill;" trademark licenses must include "quality control." To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark.
See our federal trademark searching webinar series to register for upcoming sessions, or watch recordings of previous webinars . Log into your USPTO.gov account for a better search experience. Logging in using the Sign in link in the top right corner helps you avoid errors when the system is handling heavy traffic.
The McDonald's golden arches design is an example of a registered trademark in special form format. The company Nike registered this trademark in special form format, combining the stylized word Nike with their swoosh logo. The format of the trademark you apply to register affects your application filing requirements.