Trademark Assignment

What is a trademark assignment?

A trademark assignment is a document used to transfer rights in a trademark (i.e. logo, name, or symbol) to new owner, a creditor, or even as part of settlement of some other contractual negotiation. An assignment can either carry all the rights associated with a trademark or may be limited in some form or another. 

How do I transfer my trademark to another party?

There are two steps required in order to have an effective trademark assignment. First, you must have a signed trademark transfer agreement, which must include terms of the agreement, payment terms, the rights being assigned, the registration and/or application number of the trademark and any warranties or representations of the parties. The parties should ensure that there are no current or pending claims against the federal trademark, which would be included in the Seller’s representations.

The second step is to file the transfer agreement with the United States Patent and Trademark Office (USPTO). The USPTO has their own filing system where the assignment may be recorded. The UPSTO has their internal assignment system that makes the filing process even easier, which also includes forms for the transfer. The last part of the USPTO filing is to submit a $40 filing fee with the USPTO. 

What are the potential issues associated with assigning trademark rights?

One of the biggest reasons for properly transferring trademark rights with a written assignment is if the assignment is part of business acquisition and not properly recorded, the original owner could be on the hook for any future infringement based on the trademark. Additionally, if you buy a trademark and do not properly transfer those rights, you could find yourself in a battle with the original owner over the true ownership of the Mark.