uspto fee to record trademark assignment

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

If you need help with USPTO trademark 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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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. 

How much does a trademark assignment cost?

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.

What should be included in the trademark assignment?

It is important to specify the details of the trademark(s) to be transferred. The trademark assignment should include:

• name and address of the new owner (assignee);
• if the assignee is a company, the type of entity and state of incorporation;
• specific details of the trademark application(s) and/or registration(s) to be transferred; and
• language regarding the transfer of goodwill associated with the marks.

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.

Can an ITU application be transferred prior to showing use of 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.

Should trademark assignments be recorded with the USPTO?

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.

How to search USPTO trademark assignments

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.

How to transfer a trademark with a renewal deadline approaching

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.

What should the new trademark owner do?

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.

What if the owner is the same, but the company has changed its name?

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.

Need to transfer a trademark application or registration?

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.

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Why it costs money to record a trademark assignment at USPTO?

Used to be you had to pay a $40 fee to record an assignment at the USPTO.  Adding a second property to the recordation cost $40 if you were recording a patent assignment but cost $25 if you were recording a trademark assignment.

I never understood why that second or third property cost one price for trademarks and a different price for patents.

Almost two years ago the USPTO cut the fee for recording a  patent assignment to zero.  This was welcome news.  When that price cut happened, I recall wondering why this fee did not drop to zero for  trademark  assignments.

Today I got my chance.  I am the vice-chair of AIPLA’s Patent Cooperation Treaty Issues committee, so I was present at a meeting of committee chairs, vice-chairs, and board members.  Mary Boney Denison, the Commissioner for Trademarks, was a special guest.  When she finished her prepared remarks, she asked if anybody had any questions.  So I raised my hand and asked why it is that we have to pay money to record a trademark assignment when we don’t need to pay money to record a patent assignment.

The Commissioner looked at me.  I got the impression that she may have gotten this question before.  Her response was that the patent office did not check with the trademark office before announcing this price cut.  And that the trademark office has no interest in reducing this fee to zero.

Now in fairness to the situation, the consequences on the world of IP of a nonzero fee for recording an assignment are different for patents than for trademarks.  Most patents (nearly all of the patents handled by my firm) have an assignment recorded.  In contrast, most trademark registrations go through their entire life without an assignment being recorded.  Said differently, when the USPTO cut the price for recording a patent assignment to zero, this made a difference for hundreds of thousands of patent applications and patents per year.  In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners (whose trademarks generally only rarely change hands).

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3 replies to “why it costs money to record a trademark assignment at uspto”.

But Carl, that actually argues for cutting the trademark assignment fees. The Patent division gave up hundreds of thousands of dollars in revenues by eliminating patent recordation fees. The TM division would give up much less revenue than that, because so few assignments are recorded. So that’s another reason why TM assignment recordation should be free.

“In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners”. And in what way is this relevant to a fee being charged for trademark assignments and not for patent assignments? As it is, the patent side of the PTO gave up a significant income stream, but what you’re saying is that the TM side would not have to. So why do they keep on charging the fee? – from the article, it sounds as if “we can charge it, so we do”.

It seems counter-intuitive. Drop the patent assignment fee to $0 and the PTO loses a lot of money. Drop the trademark assignment fee to zero and the PTO loses very little money. If you had to chose, drop the trademark fee which results in a far smaller lose of revenue that dropping the patent assignment fee. ??

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Trademark Assignment Recordation

Keep your trademark ownership records current with the uspto.

A trademark assignment recordation is filed with the U.S. Patent and Trademark Office (USPTO) to maintain current records of trademark ownership.

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Transfer trademark rights

A trademark assignment is the transfer of trademark rights from one owner of a mark to another.

Keep your trademark records current

Trademark assignment recordation keeps the USPTO's records current, and keeps the public on notice as to the rightful owner of a trademark. This is important because the USPTO or another party may have reason to contact the owner of a trademark.

Record your assignment

If you have assigned your trademark to a corporation, LLC or other business entity, or to an individual, it's important to provide the USPTO with the new owner's information by recording your assignment.

How it works

1. Complete our simple online questionnaire

2. Review your completed assignment recordation

3. We electronically file your assignment recordation with the USPTO

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The following are the trademark fees charged by the United States Patent and Trademark Office.  Patent Fees  are listed separately.

Note that most PTO fees are "per class" - that is, if the goods or services fall under more than one class in the International Classification of Goods and Services, then you must pay a separate fee for each class of goods. For example, if you are selling mugs (Glassware, Class 21) and t-shirts (Clothing, Class 25), you'd need to pay double the filing fees for a single class application. On the other hand, mugs, glasses and plates would fall into just class 21, so filing for these goods would only incur one filing fee. For a list of acceptable goods and services descriptions, with classes, see the " Trademark Identification Manual " on the USPTO website. 

For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO's General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. A complete copy of the USPTO's fee schedule is also available from  their website

Most trademark fees increased,  effective January 14, 2017 . Also, additional fees for filing on paper are imposed for most filings.

Note: these fees are correct as of January 2, 2021. As USPTO fees are subject to change, be sure to check for the latest fees before filing anything. 

The preceding information was retrieved from the USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees.

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• Posted On July 20, 2023
• Posted By By Siddhi Jain
• Trademark registration

How to record trademark assignments with USPTO?

Table of Content

Introduction

Recording a trademark assignment with the United States Patent and Trademark Office (USPTO) is an important process that ensures the legal transfer of ownership of it. A trademark assignment refers to the transfer of ownership of a registered trademark from one party to another. This article provides an overview of the process of recording a trademark assignment with the USPTO, including why it’s important, the different types of trademark assignments , the recording fees, and how to complete the process.

What is a trademark assignment?

A trademark assignment is a formal legal agreement that facilitates the transfer of ownership of a registered trademark from one party to another. It may occur when a company is bought or sold, or when a trademark is licensed or assigned to another entity. The document includes details such as the name of the assignor (the current trademark owner), the name of the assignee (the new trademark owner), the trademark registration number, and the goods or services associated with the trademark.

Why record a trademark assignment?

Recording a trademark assignment with the USPTO provides notice to the public upon the change in ownership. It also helps to protect the legal rights of the new trademark owner and prevents others from using the trademark without permission. Failure to record a trademark assignment may result in disputes over the legal ownership of it.

Different types of trademark assignments

There are two types of trademark assignments:

Complete Assignment: This type of assignment transfers all rights and ownership in a trademark from the assignor to the assignee.

Partial Assignment: This type of assignment transfers only some of the rights and ownership in a trademark from the assignor to the assignee.

How to record a trademark assignment with the USPTO?

The process of recording a trademark assignment with the United States Patent & Trademark Office (USPTO) involves several steps:

Prepare the Trademark Assignment Agreement

The first step is to prepare the trademark assignment agreement. This document includes the names of both the assignor and assignee, the Trademark Registration number, and the goods or services associated with the trademark.

Complete the USPTO Assignment Recordation Form

Fill out the Recordation Form Cover Sheet, which can be completed online or on paper. The form is available in PDF-fillable format on the USPTO Forms page. The form requires the following information:

• Each trademark registration number and each trademark application number, if known, against which the Office is to record the document.
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed.
• The date the document was executed

Submit the Trademark Assignment Agreement and Form to the USPTO

Once the trademark assignment agreement and the Assignment Recordation Form have been completed, they should be submitted to the USPTO for recording. A recording fee must be paid at the time of submission.

USPTO to Process the Assignment

Wait for the USPTO to process the assignment request. Generally, paper-filed assignments are recorded within 20 days of filing. Filing electronically is recommended and will result in faster processing times and fewer errors.

Check the Status

Check the Trademark Status and Document Retrieval (TSDR) after receiving the Notice of Recordation to verify that the owner’s information has been updated. If the owner’s information hasn’t been updated yet, wait one week before checking again.

Documents required for recording the trademark assignment with USPTO

When recording an assigned trademark with the USPTO, several documents must be submitted to complete the process. These documents include:

• Trademark Assignment Agreement
• USPTO Assignment Recordation Form
• Certificate of Good Standing
• Power of Attorney
• Government-issued Identification

It is important to ensure that all documents are accurate and complete to avoid any delays or issues with the recording process.

What are the recording fees for trademark assignments?

The USPTO charges a fee for recording a trademark assignment, which can vary depending on the type of assignment being made and the number of trademarks being assigned. The fees can be found on the USPTO website.

In conclusion, recording a trademark assignment with the USPTO is an important step in transferring ownership of it. By following the necessary steps and submitting the required documents and recording fees, trademark owners can protect their legal rights and prevent unauthorized use of their trademarks.

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Changing Owners of a Trademark Registration (Trademark Assignments)

In order to change the owner of a trademark registration  a document called a “trademark assignment” must be filed with the United States Patent and Trademark Office (USPTO).

While the filing itself may seem simple, it is incredibly important that it is drafted correctly and that there is a clear “chain of title” from the Assignor to the Assignee. A mistake in this process could result in the cancellation of the entire registration.

We offer a flat fee service to change ownership of a trademark. The service includes:

• Assessing the change of ownership to ensure it is being done properly and in accordance with federal trademark laws.
• Assisting with the creation of a detailed written assignment agreement.
• Filing the assignment with the USPTO, along with any required documentation or fees.
• Monitoring the processing of your assignment.
• Dealing promptly with questions or issues that may arise from the USPTO.

When you do you need a trademark assignment?

A trademark assignment is required in the case of:

• Transfer of ownership to a different company. A normal Asset Purchase Agreement typically does not properly transfer the associated trademark registrations.
• A change in your business entity. An example would be a conversion from an LLC to a corporation.
• A legal name change. If the legal name of a trademark owner changes – whether it is an individual or a business – the USPTO must be notified.

In the case of transfer of ownership to a new company, you are not merely transferring the right to use the name. You are transferring the underlying goodwill that the trademark represents to a business. If you do not transfer this underlying goodwill , the new owner will not be able to take advantage of your past use of the name and claim it as its own.

The different types of trademark assignments

Registered trademark assignments When transferring the ownership of a registered trademark to a different company, the USPTO requires a written agreement called a “Trademark Assignment.” This is a detailed document that provides necessary information for a successful transfer of ownership, ensuring that the trademark’s underlying goodwill is transferred to the new trademark owner.

Intent-to-use trademark assignments If your application is based on “intent-to-use” (meaning that your trademark is not yet in use), extra care has to be taken with your trademark assignment. This is because the USPTO prohibits the “trafficking of trademarks.” In other words, the USPTO does not want entities to file trademark applications solely for the purpose of selling them off. Therefore, the only way to transfer a trademark based on an “intent-to-use” is to transfer the entire business associated with that trademark to the new owner. The situation involves nuances that would benefit greatly from the participation of an experienced trademark attorney .

Corporate name changes or conversions Once the written Trademark Assignment is completed, the next step is filing a request online with the USPTO through its Electronic Trademark Assignment System (ETAS). However, the fact that the USPTO accepts the filing does not mean that it is valid. The associated documentation must match USPTO requirements, or the filing could be rejected. For example, when a trademark is not properly assigned to the new company, the USPTO will refuse the Assignment. The new owner will not be able to claim the rights until a new, corrected filing is made. The online form asks for the applicable trademark assignment option, the nature of the trademark’s change of ownership, plus additional information. You’ll pay any applicable fees and upload documentation including a cover sheet detailing the nature of the ownership change.

The benefits of using Gerben IP for changing the owner of your trademark registration

• Rigorous attention to detail. We understand the meticulous requirements and nuances involved in a successful trademark assignment filing.
• Accuracy and reliability. A poorly worded Trademark Assignment or incorrectly filed documentation can put a change of trademark ownership in jeopardy. We’ll file the necessary documentation accurately and on time.
• Skill and experience. Our attorneys have successfully transferred rights for hundreds of trademarks since 2008.

Not only is it important to properly transfer the ownership of a trademark, it is also crucial to correctly determine who should own a trademark. For more information on who should own a trademark, check out the video below.

Do you need assistance with a trademark assignment?

USPTO Stands Behind Significant New Fees for 2025

The USPTO has taken another step toward implementing fee adjustments in January 2025, by publishing a Notice of Proposed Rulemaking (RPRM) on April 3, 2024. The NPRM stands by most of the significant fee adjustments it proposed in April 2023 , with a few changes made in response to input from the Patent Public Advisory Committee (PPAC). Stakeholders will want to plan ahead for across-the-board fee increases of about 5% and more significant targeted fee adjustments (and new fees) that could impact patent prosecution strategies.

Proposed Fee Adjustments

Detailed information on the proposed fee adjustments is available on the USPTO’s  Fee-Setting web page . There you can find a slide deck that provides an overview of the proposed fee changes (in alphabetical order), as well as documentation supporting the proposals.

The following summary lists fees at the undiscounted (large entity) rate.

Significantly Higher Fees

Examples of significantly higher fees include:

• The aggregate of filing, search, examination, and issue fees for design patents will increase by about 48%
• Excess claim fees will double to US$200 for each claim over 20 and increase 25% to US$600 for each independent claim over three.
• 1 st RCE: US$1,500 (+10% over current fee)2 nd RCE: US$2,500 (+25% over current fee)
• 3 rd RCE: US$3,600 (+80% over current fee)
• The fee for a Request for Reconsideration of the USPTO’s Patent Term Adjustment calculation will increase 43% from US$210 to US$300
• The fee for a Patent Term Extension application (e.g., based on FDA review of a regulated product) will increase 468% from US$1,180 to US$6,700

New Fees Aimed at Cost Recovery

• After Final Consideration Pilot Program Request: US$500
• Petitions associated with unintentional delay of > 2 years: US$3,000

New Fees That Could Change Applicant Behavior

• Continuing Application Surcharge, filed ≥ 5 years after earliest benefit date: US$2,200
• Continuing Application Surcharge, filed ≥ 8 years after earliest benefit date: US$3,500

The NPRM defines “earliest benefit date” as the earliest priority date claimed under 35 USC § 120, 121, 365(c) or 386(c), and 37 CFR § 1.78(d), also known as the “patent term filing date” (e.g., the date from which the 20-year patent term is calculated), and not including priority claims to provisional applications. The NPRM expressly includes divisional applications in the category of “continuing” applications that could be encompassed by these fees.

• > 50 items: US$200> 100 items: US$300
• > 200 items: US$300
• Before a first Office Action on the merits: US$200
• Before a final Office Action: US$500
• After a final Office Action or Allowance: US$800
• On or after filing a Notice of Appeal: US$1,100
• After patent grant: US$1,400

PTAB Trial Fees

• Petition fees for PTAB trials will increase by about 25%
• There will be a new US$440 fee for a Request for Director review of a PTAB decision

Did the USPTO Take Any of PPAC’s Advice? 

The NPRM addresses PPAC’s comments  on the proposed fee adjustments, but the USPTO maintained most of the fee increases PPAC objected to. It dropped the proposal to impose a nominal fee for recording an assignment submitted electronically, stated that it is withdrawing the proposal to permit additional words in an inter partes or post-grant petition for a fee, and adjusted the timing of the continuing application surcharges (originally proposed to take effect at > 3 years and > 7 years), but otherwise responded by providing more justification for the original proposals. With that history in mind, it is not clear whether stakeholder comments could have any impact on the final schedule, but the USPTO is obligated by law to consider written comments properly submitted through the Federal eRulemaking Portal by June 3, 2024.

Courtenay C. Brinckerhoff

Related insights, federal circuit applies safe harbor to imported medical device samples, which significant uspto fee increases might we see in 2025, uspto releases guidance on rule 132 declarations.

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

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

Patents Assignments: Change & search ownership

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

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

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

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

Change Ownership - Assignment Center

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

Patent Assignment Search

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

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

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

• All involved parties – the assignor and assignee – should be identified.
• The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
• Consideration must be listed (i.e. what each party is receiving).
• List the effective date of the transfer.
• Contract must be duly executed.
• Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

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 loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

• Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
• Sale of business : A trademark owner may decide to focus on a different business or retire.
• Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

• Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
• Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
• Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
• Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
• Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
• Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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