Trademark Assignments

On the most fundamental level, a trademark assignment is simply the situation under which an existing trademark holder transfers the rights to the trademark to another individual/entity. Specifically, the original trademark owner transfers, sells, or assigns his rights to the trademark to a new party and it is incumbent on the new party to register this change of ownership with the USPTO. For those more technically inclined, according to the Trademark Federal Statutes and Rules (TFSR), an “Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.”

Yes. You Need to Have a Trademark Assignment Agreement Drafted

Trademark Assignments Signify a Change of Rights to the Trademark

A company’s trademarks and intellectual property are arguably the company’s most important assets. Why do people purchase NIKE shoes? Because of the goodwill associated with the brand name “NIKE” – the Shoe is secondary to the name. Marketing professionals have known this for centuries and you can bet that any company interested in buying the NIKE Corporation would want to ensure that such a sale would include the rights to the trademark, NIKE.

What’s in a Trademark Assignment Agreement?

The Trademark Assignment Agreement is the formal document which outlines the terms and conditions of the Assignment. Typically, this agreement will include provisions stating the scope of the assignment (full or partial assignment), the payment terms, and certain representations and warranties concerning the original owners rights to the trademark.

Trademark Assignments – The Fine Print

Assignments Must be in Writing

The USPTO has adopted the broader position of government bodies and agencies to mandate records and documentation. If you are engaging in a trademark assignment agreement (as either the buyer or seller), make sure the full scope and contours of the deal are in writing.

Partial Assignments

Trademarks, like other forms of property, may, in fact, be owned by multiple people/entities at any given time. Therefore, through the operation of law and contract, one of the co-owners may very well have the right to assign his partial and isolated ownership interest in the trademark to another. Or, if the trademark has only one owner on record, the owner may transfer and assign a designated portion of his right to the trademark to another. This partial assignment should be documented and filed with the USPTO.

What Should I Submit to the USPTO For a Valid Trademark Assignment

Keep On Documenting

Remember, the USPTO is a Government body with cumbersome (but arguably necessary) logistical requests designed to put law and order to a colossal amount of data. The USPTO wants things nice and orderly and to maximize the likelihood of smooth and efficient trademark assignments, require the following:

TMEP 503(b) – SUPPORTING DOCUMENTS

To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted:

(1) A copy of the document;
(2) A copy of an extract from the document evidencing the effect on title; or
(3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.

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