What is a Trademark Assignment and How Does it Work?
A trademark assignment is the process of transferring trademark ownership from one party to another. Once the trademark is transferred successfully, the new trademark owner is responsible for all aspects of the trademark, such as maintaining and licensing it.
To ensure the process meets all regulations and is done correctly, an agreement usually lays the foundation for it.
Whether you’re assigning a trademark to someone else or taking ownership of someone else’s trademark, you should read the rest of this article to better understand what the process involves.
Explore how to navigate the trademark assignment process and when to consult with a lawyer for legal expertise.
When Do You Need to Transfer a Trademark?
Trademark assignment can occur in various situations, such as the following:
- You’re selling your business to a new owner.
- Your company is merging with another one.
- You’re transferring assets to a loved one.
- You’re rebranding your company.
What are Key Terms in a Trademark Assignment Agreement?
A trademark assignment agreement usually contains information about the following key terms:
- Terms and conditions. This includes details about the deal, such as pricing and conditions that have to be met prior to the transfer.
- Representations and warranties. The assignor will guarantee that they own the trademark, they have the legal right to transfer it to the assignee, and there are no disputes related to the trademark.
- Assignment provisions. Trademark details and the parties’ rights and duties need to be specified for clarity.
- Effective date. The trademark transfer is official on the effective date listed in the agreement.
What is the Process of Transferring a Trademark Assignment?
When transferring a trademark agreement, there are specific steps to follow.
Draft an Agreement
The first step in the process is to draft a trademark assignment agreement that’s signed, with information about both parties, and a statement that the trademark is assigned with goodwill.
Goodwill means that you’re transferring the brand’s customer trust and good reputation with the trademark. Your submission and agreement should state that the trademark assignment includes the business value, so that the assignee can continue to offer the same brand experience to customers.
If you need help with drafting or reviewing a trademark assignment, you can seek help from a professional lawyer. On ContractsCounsel, one of the largest online legal marketplaces connecting clients with vetted lawyers, you can post a request for a lawyer to draft or review your agreement.
Here is how to post your request:
1. Go to the ContractsCounsel marketplace and post your project. It’s free.
2. Receive multiple bids from lawyers directly on the platform who can assist you.
3. Once you receive the lawyer bids, you should review the lawyers' profiles. There’s lots of info on the platform to help you choose the best lawyer, such as their location, client ratings, years of experience, and field of expertise.
4. Hire a lawyer who is best suited to your requirements.
Record the Trademark Assignment
Once you’ve drafted the trademark assignment agreement and had it legally reviewed, you need to record your assignment with the relevant authority.
In the U.S., this is the United States Patent and Trademark Office (USPTO) assignment center. Here are the steps to follow:
1. Create a USPTO.gov account.
2. Upload your signed trademark assignment agreement.
3. Fill out a cover sheet to go with the assignment. This is available on the USPTO website and includes information such as details of the parties.
4. Pay the fee to record the trademark assignment. This is approximately $40.
Within a few days, you’ll receive a notice. Either your trademark assignment will be recorded or non-recorded. If you get a non-recordation notice, this means your request was denied because of an error in your application.
Mistakes to Avoid When Submitting a Trademark Assignment
Some common mistakes that can prevent you from successfully recording your trademark assignment include:
- You haven’t provided all the required information in the cover sheet.
- Your document isn’t legible.
- You provided information on your cover sheet and supporting documents that don't match.
- You neglected to transfer the assignment with the goodwill of the business.
How Can a Lawyer Help You With a Trademark Assignment?
Hiring a lawyer can be beneficial if you want to assign your trademark to someone else. A lawyer will be able to conduct various activities in the process, such as:
- Checking that the agreement and process follows all the rules. This is especially important to do because trademark assignment laws vary in different states.
- Helping you with all the documents you need to file so that you don’t make any mistakes.
- Reviewing the terms of the trademark assignment agreement so that it’s clear and legally sound.
- Protecting your ownership as assignments that aren’t properly recorded can make enforcement challenging.
- Helping you navigate a complex trademark assignment, such as if it’s an international one.
- Checking that there are no problems associated with the trademark, such as regarding its prior registration or disputes surrounding it.
- Answering any questions you might have about complex or unclear aspects of the transfer.
Where to Find a Lawyer for a Trademark Assignment
If you need a lawyer to help you with a trademark assignment, you can find one on ContractsCounsel. It’s easy to connect with a qualified lawyer, who will help you with all the steps of the trademark assignment process.
They can also review or draft your trademark assignment agreement so that it’s clear, legally valid, and protects you against any risks.
You can search for a lawyer on the ContractsCounsel platform by viewing lawyers’ profiles. Get access to data related to their experience in similar projects, read through their client reviews, and view their expertise before hiring one.
