Understanding Your Trademark Assignment

Understanding Your Trademark Assignment

by Cindy DeRuyter, Esq., February 2019

If you assign your trademark to another person or business, you transfer ownership and rights for your intellectual property. Conversely, if your business wants to acquire another organization's trademark rights, you can enter into an assignment agreement to obtain ownership benefits and rights.

Understanding what a trademark assignment is, why and how to register it with the U.S. Patent and Trademark Association (USPTO), and how to conduct an assignment search can help you make informed decisions about your intellectual property.

Trademark Assignment Basics

If your business owns one or more trademarks and its name changes, you probably need to assign them to the new entity. A U.S. trademark assignment allows a business that owns or has applied for a trademark in the United States to transfer ownership to someone else—even if it's the same entity under a new name. The person or business transferring ownership is the assignor, and the receiver is the assignee.

The parties document the terms for the transfer of rights using an assignment agreement, which should then be registered with the USPTO. Once complete, the new owner assumes all of the rights associated with the trademark.

If you aren't sure who technically owns your mark(s) today, you can look up assignment history online. The USPTO maintains a trademark assignment database, making it relatively simple to determine whether the original owner ever transferred their intellectual property rights to someone else.

Elements Required for Valid Trademark Assignments

Just like any other legal document, your trademark purchase and assignment agreement must include certain elements. When drafting the contract, you or your legal service provider should:

  • Identify the parties, using full, legal names.
  • Clearly identify the mark(s) covered by the agreement.
  • Document the consideration for the agreement.
  • Assign the trademark's goodwill to the assignee. Goodwill includes the connection the mark facilitates between the company and its customers.
  • Include any warranties or representations the assignor makes to the assignee, such as a warranty that the assignor has the right to enter into the contract.

While you can assign a trademark using an oral agreement, written agreements protect you and the other party by documenting your intentions and understandings.

Why Register Trademark Assignments

When businesses are reorganized, renamed, or acquired by other entities, the company's property usually becomes the property of the new nominal owner of the business. An asset purchase agreement or other contract documents this transfer. However, with respect to intellectual property such as trademarks, ownership changes are not automatic. That's why assignments are important.

The owner of a trademark is the person or entity listed in the USPTO's database. Registering an assignment updates the record and gives the assignee the legal right to enforce against infringement, even retroactively to the original registration date. When the parties fail to file assignment paperwork with the USPTO, the assignee would need to apply for a new trademark and could only enforce it from that point forward.

You can record a trademark assignment either online or with a paper form filed with the USPTO along with the current assignment fee.

When you are ready to assign a trademark you own to another party or simply update your legal name on USPTO records, an using a trademark assignment form can help.