what is a 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.

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another.  In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public.  Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee.  In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment.  This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO).  This should be done electronically using the USPTO’s Assignment Center System .  You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal).  It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.  In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark.  If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek.  If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below.  I look forward to hearing from you soon.

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Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

By Eric Perrott, Esq.

Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred. 

A trademark could be a word, a phrase, a symbol, or even a shape. However, one thing all different forms of trademarks share are that they represent a single source. They are essentially a shortcut for consumers to bring to mind a company’s quality, customer service, and even values, at a glance. A trademark only has value because of the impact it has on consumers and the exposure consumers have had to that brand. 

When transferring a trademark, simply allowing another company to use the trademark is not enough. You must transfer not only the right to the word or image, but also the underlying goodwill behind the trademark.

It is crucial that trademark owners properly transfer, or “assign” their trademarks to avoid delays, confusion, or worst of all, a break in title that could invalidate the earlier use of the trademark and ruin the value of the trademark. 

A Trademark Assignment Transfers Trademark Rights

A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a “transfer of goodwill” – this is written fully as a transfer of “(1) all the property, right, title and interest in and to the Trademark including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the Trademark is used and which is symbolized by the Trademark; (2) all income, royalties, and damages hereafter due or payable to Assignor with respect to the Trademark, including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark; and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademark.” 

By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights.  However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark. 

If the goodwill is not transferred, the new owner is essentially stating that they will not work to maintain the mark’s reputation among consumers. 

Common Issues with Preparing and Filing Assignments

When filing an assignment, either current or in the past, the assignment requires: 

• the proper names of owners – if business entities, then complete names of active business entities
• the date any transfer took place, whether in the past or on the date of signing 
• the language above for all goodwill and interest and rights to sue for past infringement 
• signatures of both the assignor and assignee – or qualified representatives of those entities

This may seem simple, but when completing a trademark assignment, it is important to understand why each of these items are needed in order to ensure that the transfer is done correctly. The mere fact that the USPTO accepts a recordation of an assignment does not mean it is valid.

 One common pitfall of attempting to file an assignment yourself is mixing up assignor or assignee, writing the wrong owner, or assigning the mark to an individual and not a business entity. Before assigning a trademark, ensure that you consider why the transfer is taking place. 

For example:

• You may be transferring a trademark from one company you own to another as a restructuring of assets, such as a holding company or a change in tax status. 
• You might have sold the business and all underlying trademark rights in the business name.
• You may be transferring a mark according to a will or bankruptcy.
• You may be transferring from your name, personally, to a newly created entity

All of these situations have their own nuances and it is easy to confuse who owns the rights with who is receiving them. No matter what, ensure that your assignment matches the owner on the trademark registration. Sometimes a trademark might change hands two or three times, with a few corporate name changes in the middle. You should be able to draw a straight line from the original owner to the new owner, and each step must be documented with the USPTO to ensure the recordation is valid. It might be a multi-step process involving multiple parties and, while complicated, it is essential that the ownership and chain-of-title are both correct.

Another common pitfall occurs when filing other documents, such as renewals. The filer is required to sign a sworn statement that the owner is correct. If the old owner files a renewal in the name of the old organization, the owner may have made a sworn statement that it was the owner of the mark, which could cause delays or even prejudice the registration in future proceedings.

Similarly, if the new owner files, they cannot simply change the name in the renewal. This will cause significant delays, as they will need to prepare an assignment and record it with the USPTO’s assignment branch before the renewal can be filed. If close to deadlines, this could get extremely complicated and cause additional fees or potential loss of rights.

Trademark assignments are an important part of the trademark lifecycle, as they allow trademark owners to buy and sell brands and further benefit from the goodwill represented by their brands. However, trademark owners should carefully consider the content of any assignment documents and ensure that they match the reality of the situation and the requirements of the USPTO.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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Trademark Assignment

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A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.

This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.

This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.

How to use this document

This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.

This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.

Once the form is complete, the parties can undertake the following steps:

1) Sign and execute the form in front of a notary (both parties)

2) Have the notarization completed

3) Record the Trademark Assignment with the United States Patent and Trademark Office

Applicable law

Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).

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Understanding the Basics of Trademark Assignment

This article aims to provide a comprehensive understanding of the basics of trademark assignment. It explores the importance of trademark assignment , outlining key elements of a trademark assignment agreement and the steps involved in assigning a trademark. Additionally, it discusses common challenges faced during the process and highlights legal considerations that need to be taken into account. Lastly, it presents best practices for successful trademark assignment. The information provided herein is intended to serve as an informative resource for individuals seeking knowledge in this domain.

Key Takeaways

- Transfer ownership rights and protect intellectual property

- Ensure legal authority to use and profit from the mark

- Prevent unauthorized use or infringement

- Understand benefits of trademark registration

The Importance of Trademark Assignment

The importance of trademark assignment lies in its ability to transfer ownership rights and protect the associated intellectual property. By assigning a trademark, an owner can transfer their exclusive rights to another party, ensuring that they have the legal authority to use and profit from the mark. Furthermore, trademark assignment plays a crucial role in protecting intellectual property by preventing unauthorized use or infringement. Understanding the benefits of trademark registration and how it relates to protecting intellectual property is essential when considering a trademark assignment agreement, which includes key elements such as...

Key Elements of a Trademark Assignment Agreement

This discussion will focus on the key elements of a trademark assignment agreement, specifically the legal requirements for assignment, transfer of ownership rights, and consideration and compensation. In order for a trademark assignment to be valid, it must meet certain legal requirements outlined by intellectual property laws. Additionally, the transfer of ownership rights from the assignor to the assignee is a crucial aspect of any trademark assignment agreement. Lastly, consideration and compensation play an important role in determining the value exchanged between parties involved in a trademark assignment.

Legal Requirements for Assignment

Legal requirements for assignment of trademarks include the need for a written agreement signed by both parties involved, as well as proper documentation evidencing the transfer of ownership. These legal documents are essential to ensure that the assignment is valid and enforceable. The written agreement outlines the terms and conditions of the assignment, including any contractual obligations that both parties must adhere to. It serves as a binding contract between the assignor and assignee, protecting their respective rights and responsibilities. With these legal requirements in place, the transfer of ownership rights can be properly executed without any ambiguity or dispute arising.

Transfer of Ownership Rights

Effective transfer of ownership rights requires adherence to specific legal requirements, including the execution of a written agreement signed by both parties and documentation that substantiates the transfer. Proper documentation ensures clarity and validity in the assignment process. Additionally, it is important to consider the tax implications associated with transferring ownership rights, as this can have significant financial consequences for both parties involved. Understanding these documentation requirements and tax implications is crucial in ensuring a smooth and legally sound transfer of ownership rights. Moving forward, we will explore the aspect of consideration and compensation in trademark assignment.

Consideration and Compensation

Consideration and compensation play a significant role in the process of transferring ownership rights, as they determine the financial aspect of the assignment. When assigning a trademark, several factors related to consideration and payment should be taken into account:

- Fair market value assessment of the trademark

- Negotiation of payment terms between the parties involved

- Determination of any additional monetary obligations or royalties

- Clear documentation outlining the agreed-upon consideration

- Compliance with legal requirements regarding payment and taxation

Understanding these considerations is essential before proceeding to the steps involved in assigning a trademark.

Steps Involved in Assigning a Trademark

The process of assigning a trademark involves several sequential steps. First, the owner must establish their ownership rights over the trademark through registration or prior use. Once ownership is established, the owner can assign the trademark to a third party by executing an assignment agreement. This agreement transfers all rights and interests in the trademark to the assignee. However, there are common challenges that arise during this process, which will be discussed in the next section.

Common Challenges in Trademark Assignment

Common challenges often arise during the process of assigning a trademark, requiring careful consideration and resolution. These challenges can impede the smooth execution of the trademark assignment process. Some common mistakes in trademark assignment include:

- Failure to conduct a comprehensive search for existing trademarks

- Inadequate documentation and record-keeping

- Lack of clear communication between parties involved

- Incorrect identification of goods/services associated with the trademark

- Failure to comply with legal requirements and deadlines

Addressing these challenges is crucial to ensure a successful trademark assignment. The next section will explore the legal considerations for trademark assignment.

[Transition Sentence] Now that we have discussed the common challenges faced during the trademark assignment process, it is important to delve into the legal aspects that need to be considered in order to facilitate a smooth and legally sound transfer of ownership.

Legal Considerations for Trademark Assignment

In order to ensure a legally valid transfer of ownership, it is essential to carefully adhere to the relevant legal requirements and procedures throughout the trademark assignment process. Failing to do so can result in significant legal implications and potential disputes. To avoid such complications, parties involved in a trademark assignment must meticulously follow all necessary formalities and documentation, including obtaining written consent from the assignor and ensuring accurate recordation with the appropriate trademark office. These considerations set the stage for successful trademark assignment practices.

Best Practices for Successful Trademark Assignment

To ensure a smooth and efficient transfer of trademark ownership, parties involved in the assignment process should adhere to established guidelines and industry standards. Best practices for successful trademark assignment include:

- Conducting thorough due diligence to verify the legality and validity of the trademark.

- Clearly documenting the terms and conditions of the assignment agreement.

- Notifying relevant authorities, such as the United States Patent and Trademark Office (USPTO).

- Maintaining accurate records throughout the assignment process.

- Seeking legal advice from professionals experienced in trademark law.

Frequently Asked Questions

What is the process for renewing a trademark assignment agreement.

The process for renewing a trademark assignment agreement involves submitting a renewal application to the appropriate authority, paying the required renewal fees, and ensuring compliance with any additional requirements or deadlines set by the governing body.

Can a Trademark Assignment Agreement Be Terminated or Revoked?

Revoking a trademark assignment agreement refers to the legal action of canceling or rescinding the transfer of trademark rights from one party to another. Terminating such an agreement involves ending the contractual obligations and restoring the original ownership of the trademark.

Are There Any Restrictions on Assigning a Trademark to a Foreign Entity?

Restrictions on assigning a trademark to a foreign entity may exist, posing challenges in enforcing trademark assignment agreements. These limitations can include compliance with local laws, registration requirements, and potential conflicts with existing trademarks.

How Long Does the Trademark Assignment Process Typically Take?

Trademark assignment timelines vary depending on the complexity of the process, jurisdictional requirements, and any potential challenges encountered. Common challenges in the trademark assignment process include legal complications, conflicting registrations, and delays in processing by government authorities.

What Happens if a Trademark Assignment Agreement Is Not Properly Recorded With the Appropriate Authorities?

The failure to properly record a trademark assignment agreement with the appropriate authorities may result in significant consequences and legal implications. It is crucial to comply with the necessary procedures to ensure the validity and enforceability of the assignment.

In conclusion, understanding the basics of trademark assignment is crucial for businesses looking to protect their intellectual property. A well-drafted trademark assignment agreement should include key elements such as the identification of the parties involved, a clear description of the assigned mark, and any relevant terms and conditions. The process of assigning a trademark involves steps like conducting due diligence, negotiating an agreement, and recording the assignment with the appropriate authorities. However, there are common challenges that may arise during this process, requiring legal considerations to ensure a successful assignment. By following best practices, businesses can navigate this complex area of law effectively.

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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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Fact Sheet: Introduction to Trademarks

Assignments, Licensing, and Valuation of Trademarks

Updated: December 18, 2023

1. How do I know what my trademark is worth?

The value of a trademark lies in the goodwill associated with that trademark. Goodwill is like the trademark right itself—an “intangible” asset (as distinguished from a “tangible” asset that is a physical asset that can be seen or touched, such as land, buildings, machinery, inventory, and cash) that is part of the value of the trademark owner’s business. It can be quite difficult to assign a monetary value to goodwill because many variables must be considered, such as the duration and extent to which the owner has used the trademark in business.

Some of the most common approaches to/methods of valuing a trademark are: (a) the income approach, which assigns a value to a trademark based on past and expected future profits of the goods/services associated with the trademark; (b) the market approach, which assigns a value based on comparisons of transactions (such as royalties, i.e., license fee rates) involving similar assets; (c) the cost approach, which assigns a value based on the cost of creating a trademark and the cost of replacing the existing trademark with a trademark of equivalent market power; and (d) the relief from royalty method, which estimates the expected royalty savings attributable to the ownership of the trademark.

Many companies specialize in the valuation of trademarks and may provide significant expertise in attributing a monetary value to a trademark.

See also Brand Valuation  Fact Sheet

2. Can I sell my trademark?

Yes, you can sell and/or assign (transfer) your trademark. An assignment of trademark rights can be either outright, in that it results in the total transfer of ownership of such rights from one entity to another, or (in some countries/jurisdictions) partial, resulting in the transfer of only a portion of the trademark rights.

The laws governing trademark assignments vary from one jurisdiction to another. The laws and regulations of each jurisdiction where a trademark exists should be carefully reviewed before a trademark assignment is undertaken. Failure to comply with the requirements could lead to unanticipated tax consequences or result in the invalidation of the transfer.

See also Trademark Assignments  Fact Sheet

3. Can I retain ownership of a trademark if I allow others to use it?

Yes. You can allow another party to use your trademark in commerce, while still retaining ownership of the mark, by entering into a license agreement with that person or entity.

Licensing of the use of trademarks facilitates merchandising, franchising, and distribution agreements, which play an important role in the way goods and services are distributed, marketed, and sold, both domestically and internationally License agreements may contain provisions governing the term (length) of the license, the territory covered by the license, the royalty the licensee must pay to the licensor for use of the trademark, whether the license must be recorded, whether the license covers all or just some of the goods or services protected by the licensed mark, whether the license is transferable or sublicensable, and whether the licensee has exclusive or sole rights to use the trademark (and if so, in which territory). Many license agreements will also have provisions permitting the licensor to control the quality of the goods or services produced or offered by the licensee under the licensed trademark, which are known as “quality control provisions.” In fact, to maintain your trademark rights  in many jurisdictions it is mandatory  to include quality control provisions in a trademark license agreement and, even in jurisdictions where it is not mandatory, it is always a good idea to include such provisions.

See also Trademark Licensing  Fact Sheet.

Additional Resources

Country Guides : Essential Information on Trademark Protection Worldwide Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions.  Membership required.

Please give us your  feedback on whether this fact sheet was helpful or if you have suggestions for other fact sheet topics.

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Back to Trademark ownership

What is a trademark assignment?

Written by Tomas Orsula

Senior Trademark Attorney

A trademark assignment is a document that is the grounds for the transfer of trademark ownership. It specifies the detail of the transfer, the assignor (the previous owner) and the assignee (the new owner). There are four types of trademark assignments:

• complete - where all trademark rights are transferred, including royalties, rights to issue further transfers, etc.,
• partial - where only access to certain goods or services is transferred,
• assignment with goodwill - where the new owner is granted the right to use the trademark in relation to the same products and services as the assignor, meaning the assignee is allowed to retain the brand value of the trademark,
• assignment without goodwill - where the assignee is not permitted to use the trademark in connection with the goods or services used by the assignor, thereby obtaining the trademark but not the brand value associated with it.

If you're interested in transferring the ownership of your trademark, our legal services offering includes the preparation of an assignment agreement.

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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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Trademark Ownership Change

We help you transfer ownership of a trademark., what is trademark assignment.

A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner. To record an assignment or name change, the trademark owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment. A name change does not require that the filer submit proof of name change.

Anytime a trademark changes ownership, you should record an assignment agreement. For example, an assignment should be recorded if you sell your trademark, if you gift your trademark to someone else, or if your corporate structure changes such that a new entity ends up owning the trademark rights.

What are the requirements for Trademark Assignment (Ownership Transfer)?

• The government charges a fee of $40 to process a trademark assignment.
• Complete the trademark ownership transfer workflow on www.trademarkelite.com.

Trademark Assignment

$399.00 /application + govt fee.

• Experienced Attorney will record your trademark ownership transfer
• Professional Trademark Assignment for $399.00/application + govt fee

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Our experienced attorneys helped thousands of clients with custom intellectual property solutions, enabling them to be much more competitive in business than ever before..

Trademark Elite is run by highly experienced trademark counsel who provide personalized attention and outstanding client service. And they are really nice people too!

Ryan helped me trademark the name and logo for my dental practice. He clearly explained the entire process, and I'm happy to say both of my marks are registered! I will definitely be using Trademark Elite in the future.

I've used other filing services in the past, but Trademark Elite's service is worlds apart. A real attorney - not a customer service representative - guided me through the entire process, and I didn't feel like a "just a number."

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Trademark Assignment/Ownership Transfer FAQs

Have questions? Call 1-833-863-5483 or Contact Us for support.

What is a trademark assignment?

A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner.

When do I need to file a trademark assignment?

Do i need to record an assignment if i sell my company.

Sometimes. If a company is the owner of the trademark and the company is sold, the rights provided by a Trademark Registration pass with company to a new owner by default.

If you are intending to sell a company and retain the trademark rights, either under your own name or a new company, then you should record a Trademark Assignment before the company is sold.

How much does a Trademark Assignment cost?

The government charges a fee of $100 - $200 to process a trademark assignment. If you use an attorney to file, the professional fees to prepare and file your statement of use will vary significantly based on the attorney's hourly rate.

We charge a fee of $399 per application for preparing and filing each Trademark Assignment.

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Assignment of Trademark

Updated on : Feb 22nd, 2022

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment  

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc. 

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand  ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business  

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor. 

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business  

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

• The trademark assignment should be in writing.
• The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
• The assignor should have the intent and must consent for the trademark assignment.
• The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

• The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
• The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
• The agreement should show a clear purpose of the transaction/assignment.
• The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
• The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
• The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
• The signatures and witnesses must be mentioned.
• The place and date of agreement execution must be mentioned.
• The date and day of the assignment along with the parties to the assignment must be mentioned.
• The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

• The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
• The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

• Trademark assignment agreement.
• Trademark certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

• The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
• The assignee obtains the rights of an already established brand due to trademark assignment.
• The trademark assignment supports the assignor and the assignee to expand their respective businesses.
• The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.

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What is the Stamp Duty For Trademark Assignment?

• Post author: D. Lalitha B.com B.L (Hons)
• Post published: June 6, 2024
• Post category: Intellectual Property / Trademark

Last Updated on June 6, 2024 by D. Lalitha B.com B.L (Hons)

Trademarks are important to businesses because they foster customer loyalty and memorability. They envelop names, logos, or particular images that separate an organization’s contributions from those of others in a particular industry.  Trademark assignment  is the most common way of moving brand name ownership starting with one entity then onto the next.

Kinds of Trademark Assignment:

There are four methods available for assigning a trademark. They’re:

• Partial Assignment:
• The new owner receives only a part of the rights, title, and interest in the trademark.
• The current owner retains some rights, like the authority to use it in particular markets or with specific goods/services.
• Complete Assignment:
• All rights, titles, and interests in the trademark are transferred from the current owner to the new one.
• The new owner becomes the sole owner, assuming all associated rights and duties of the trademark.
• The assignment with goodwill:
• Both the business associated with the trademark and its ownership rights are transferred.
• This occurs when a business is sold, and the new owner wishes to obtain the related trademark in addition to the business.
• The assignment without goodwill:
• Only the ownership rights of the trademark are transferred.
• Business or goodwill associated with the trademark is not included in the transfer.
• Employed when the trademark owner wishes to sell the trademark separately from the business.

Why is trademark Assignment Important?

• Financial gain for the assignor:
• Selling the brand name can generate revenue for the business owner.
• The funds can be applied to retirement or other companies.
• Asset acquisition for the assignee:
• Acquiring the trademark provides a valuable asset for establishing and growing the business.
• Increasing efficiency in business processes:
• Facilitates brand consolidations, strengthening identities and marketing effectiveness.
• Resolves legal issues related to trademark ownership, saving time and money.
• Safeguarding brand value:
• Ensures the trademark is used according to the original brand vision.
• Gives reassurance about the brand reputation and usage.

Requirements of the Trademark Assignment Deed:

• The assignment deed must only be submitted in writing.
• The trademark that is being issued should be identified.
• The parties must both complete the assignment deed.
• The purpose of the assignment deed should be money motive.
• Whether the assignment is with or without goodwill should be included in the assignment deed.
• In accordance with the Indian Stamp Act, the assignment deed must be stamped.

Applying Trademark Application:

Here’s the process of applying for a trademark online in India

• Create a profile with the Trademark Registrar:
• Register on the Trademark Registrar’s website.
• Provide necessary information:
• Identify goods and services.
• Provide company name and type of mark filing.
• Submit the required documents:
• Drawing of the proposed mark.
• Affidavit of use or intent to use the mark in commerce.
• Proof of ownership of the mark.
• Pay filing fee:
• Submit the required fee for trademark application processing.
• Send in an authentic, verified signature:
• Authenticate the application with an authenticated copy of the signature.
• Application review:
• The application is sent to an examiner for review.
• Examiner’s decision:
• The examiner makes a decision about, to allow the mark to be put into use.
• Approval and registration:
• If approved, receive a registration certificate with the symbol ® and identifying information.

Fees and Payments:

Here’s the breakdown of the fees necessary for applying for a registered trademark online in India:

• ₹9,000 for electronic filing.
• ₹10,000 for filing in person with the Trademark Registrar.
• ₹4,500 for e-filing.
• ₹5,000 for filing by hand.
• 5% of the application or assignment value, as per the Stamp Duty Act, is payable per trademark application or assignment submitted.

Forms of Identification:

Here are the options for submitting forms of identification when applying for a registered trademark:

• Submit a filing affidavit signed by the owner or owner’s representative.
• The affidavit must be scrutinised by a competent individual.
• Include brand logo, description, and date of first use.
• List names and addresses of all owners or rights holders.
• Submit an application containing documents establishing brand ownership.
• Include a copy of the registration of the trademark certificate or a statement from the entity claiming ownership.
• Provide a statement confirming the applicant’s consent to use the mark.
• Provide contact information for authorised delegates.
• Submit an application containing extracts from earlier submission documents.
• Include a statement confirming the copying of copyrighted material without permission.

What does the “Stamp Duty” entail?

Here’s an overview of stamp duty and its significance:

• Stamp duty is imposed by state governments.
• It applies to different sorts of business endeavours, like real estate transactions,  insurance policy  administration, and financial transactions.
• Mandated by the Indian Stamp Act of 1899 Section 3.
• Ensures legal completion and validity of documents.
• State governments collect revenue from stamp duty.
• Rates are determined based on document type and transaction amount.

What is Stamp Duty for trademark Assignment?

Here’s a summary of stamp duty for trademark assignment, including relevant rates:

• Stamp duty is payable on a deed of IP rights assignment, except for copyright assignments, which are exempt.
• Imposed by state law, governed by the Indian Stamp Act of 1899.
• For trademark transfer deeds and related paperwork to be legally enforceable in India, they must be stamped.
• The amount of stamp duty for trademark assignment is based on the assigned trademark’s market value.
• State governments determine market value, which varies from state to state.
• Utilized to initiate registration requests for an individual’s title following an assignment.
• Mumbai (Maharashtra): 3%
• Kolkata (West Bengal): 5%
• Ahmedabad (Gujarat): 5%

The Key role of Stamp Duty in the context of trademark assignment:

Here’s the key role of Stamp Duty in trademark assignment:

• Legal documents, including trademark transfer deeds, must be duly stamped in accordance with the Indian Stamp Act of 1899.
• Non-payment of stamp duty can render the deed invalid, unenforceable, and, or not valid in the court.
• Stamp duty acts as a source of revenue for the government.
• The generated revenue is contributing to funding various public benefits initiatives, like social welfare, education, and infrastructure development.

Conclusion:

All in all, consideration should be given to stamp duty while assigning a trademark. To ensure a consistent and hassle-free assignment of trademarks, it is advisable that you get the advice of a lawyer who can direct you through the stamp duty payment method and assist you with consenting to whatever legal criteria are still there. To ensure the viability of a trademark assignment in India, it is important to fathom the stamp duty guidelines and fulfil the associated requirements.

• Could you explain the concept of a trademark assignment?

A trademark assignment, otherwise called a trademark transfer, alludes to the most common way of transferring the ownership of a brand, starting with one party and then onto the next. It includes the total transfer, with all rights, title, and interest in the brand.

• Can a trademark assignment be partial?

Yes, it can be partial. It is possible to transfer only a part of the rights, title, and interest in a brand name as long as both parties agree and the terms are clearly stated in the assignment agreement.

• Why Notarising a Trademark Assignment is Important?

The assignee benefits from the assignment being notarised. In order to prove that there’s not a possibility of deliberate document fraud pertaining to the assignment, notarising is also vital. The assignment consequently, it must be notarised with the appropriate stamp duty. Moreover, the assignor needs to give a notarised affidavit verifying the way that the brand name is really theirs.

• Is trademark assignment possible before registration?

Yes, you can do it by submitting the TM – M form with the prescribed fees.

• What if the registry raises a query on an assignment?

If the registry issues a notice on your request for an assignment, you can reply to it by submitting a letter in the prescribed format.

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D. Lalitha B.com B.L (Hons)

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What ‘house of the dragon’ boss ryan condal learned when he took on tv’s most stressful assignment.

Since he became the sole showrunner of the 'Game of Thrones' spinoff, the writer has been managing intense anxiety while shepherding one of the most valuable franchises in the world.

By Mikey O'Connell

Mikey O'Connell

TV Features Editor

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When Ryan Condal decamped for the U.K. in 2020 to begin work on a Game of Thrones spinoff, it hadn’t occurred to the screenwriter that he, his wife and their two young children wouldn’t return to Los Angeles anytime soon. “It was about two years later, when the show came out and everybody watched it, that I finally thought, ‘Oh, OK, we’re going to be here for a while,’ ” he says.

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The New Jersey native, who initially made a living shilling pharmaceuticals, is still a fan at heart. That helped him earn the approval of Game of Thrones source material author George R.R. Martin and the confidence from HBO to let him produce a second spinoff ( A Knight of the Seven Kingdoms ). But being the steward of one of TV’s biggest properties, as Condal’s the first to admit, is a hell of a lot of work.

You’ve worked over 5,000 miles from your corporate bosses for four years now. Is that space from Hollywood a good or bad thing?

It certainly has its benefits, being physically removed. But there’s this weird thing where I don’t feel like I work in Hollywood at times. It’s been five years since I’ve pitched something other than a season or an episode of this show. It’s like I’ve been sent off on an embassy assignment.

That’s got to be odd for someone who once had a reputation for being a pitch machine.

Was that early approach a byproduct of how you came to work in the industry? You first worked in marketing and advertising for big pharma. Quite a pivot!

I always wanted to be a screenwriter, but I was a safe and conservative person. I sold my first spec and didn’t tell anybody, just kept going to my day job and writing on nights and weekends. It wasn’t until I booked my third studio gig that I finally fessed up to this double life. I didn’t want to let anybody down, but I showed [my bosses] articles about the deals, and they were like, “Wait, what? This is amazing.”

How does that safe and conservative approach manifest in the way you work now?

Oh, lots of anxiety. ( Laughs .) I’ve learned to channel it, make it useful for me, as a sort of reverse procrastination. Maybe we should call it “precrastination”? It’s a good skill set for a showrunner: looking far down the road, envisioning a possible note that might come and having three ways out of it. Having worked in corporate America, it was not an alien experience for me to be one creative cog in a collective that’s trying to make something for a corporate master. You pitch your ideas, defend them and sometimes watch them get crushed to death.

I’ve seen you refer to this as the “most stressful job” you’ve had. So, what makes you sign on to produce a second series of this scale?

In your own self-assessment, what do you think you did well and not so well in the first season?

I’m very proud of season one, but there are things that I wish we had more time to work on in postproduction.

One criticism was the lighting.

Oh, for sure. We went into season two very conscious of that feedback. Season two is much more in line with my particular aesthetic and what I think the show should look like. It’s not a massive difference, but I don’t anticipate getting the “it’s too dark” note again.

You co-ran the first season with the director Miguel Sapochnik. What’s your take on his exit, and were you ready to go it alone?

It was my suspicion that Miguel was going to do one season and probably be done. He’d done the original Game of Thrones . He climbed that mountain, and I don’t think he had anything left to prove. So while I was prepared for it, it was an adjustment. But it was something that I think I was ready to take on.

How does the pressure shift between seasons one and two?

You’ve been attached to a lot of big projects that never got made. If you could take the defibrillator paddles to one, which would it be?

Paradise Lost . I developed it with Alex Proyas, director of The Crow , for Legendary [which pulled the plug on it in 2012]. We were in Sydney for eight weeks of prep and preproduction, Bradley Cooper was going to star, and it just fell apart. It was too expensive, the VFX people filed Chapter 11 or whatever, all these business reasons. It was my most devastating moment as a writer because I thought the train had left the station. But it’s when I realized that I’m responsible for my own happiness and sense of worth.

As a fan of many things, what IP do you most want to adapt?

I love Hellboy . Very simply, Hellboy is an X-File who investigates X-Files. He’s a paranormal detective. And I like the Guillermo del Toro movies, but it’s one of those properties that’s suited very well to episodic TV because there is a monster of the week in the best way. It would be a great change of pace from what I’m doing now.

We’ve talked a lot about pressure. What do you do to de-stress?

This story first appeared in the June 5 issue of The Hollywood Reporter magazine. Click here to subscribe .

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Index of all TEAS forms

See below for a listing of all forms within a specific category. To access a form, select the form name.

To look at the forms prior to accessing the electronic version in the list below, see the form previews . Do not attempt to file the PDF version. It is for informational purposes only and not for submitting the form. 

Log in to access forms

To access TEAS and TEASi forms, select a form listed below. If you are not already signed into MyUSPTO using your USPTO.gov account, then you will be prompted to log in with two-step authentication.

For the latest information or to create a USPTO.gov account, review the Log in to TEAS and TEASi page .

Initial Application Form

• TEAS Plus/TEAS Standard Application
• Trademark/Servicemark Application, Supplemental Registe r
• Certification Mark Application, Principal Register
• Collective Membership Mark Application, Principal Register
• Collective Trademark/Servicemark Application, Principal Register

Response Forms

• Response to Office Action Form
• Request for Reconsideration after Final Office Action Form
• Response to Suspension Inquiry or Letter of Suspension
• Request for Extension of Time to file a Response (Trademark Application)
• Response to Intent-to-Use (ITU) Office action
• Response to Post-Registration Office action
• Response to Petition to Revive Deficiency Letter
• Response to Petition to Director Inquiry Letter

Intent-to-Use (ITU) Forms

• Statement of Use/Amendment to Allege Use for Intent-to-Use Application
• Request for Extension of Time to File a Statement of Use
• Respond to an Intent-to-Use Unit Office action

Extension Request Forms

• Request for Extension of Time to File a Response (Trademark Application or Expungement or Reexamination Proceeding)

Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Forms

• Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form
• Request to Delete Section 1(b) Basis, Intent-to-Use

Correspondence and Attorney/Domestic Representative Forms

• Change Address or Representation (CAR) Form
• Withdrawal of Attorney

Petition Forms

• Petition to Revive Abandoned Application - Failure to Respond Timely to Office Action
• Petition to Revive Abandoned Application - Failure to File Timely Statement of Use or Extension Request
• Petition to Director
• Petition to make Special
• Request to Restore Filing Date
• Request to Make Special
• Request for Reinstatement
• Petition to Change the Filing Basis After Publication
• Letter of Protest
• Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services after NOA
• Petition to Director to Review Denial of Certification of International Application
• Petition to Director for an International Application/Registration

Expungement or Reexamination Forms

• Petition for Expungement or Reexamination
• Response to a Post-Registration office action
• Request for Extension of Time to File a Response (Expungement or Reexamination Proceeding)  

Miscellaneous Forms

• Voluntary Amendment Not in Response to USPTO Office Action/Letter
• Request for Express Abandonment (Withdrawal) of Application
• Request to Divide Application
• Order Trademark Presentation Copy of Registration Certificate  

Registration Maintenance/Renewal Forms

• Combined declaration of use & incontestability under Sections 8 & 15
• Declaration of Use and/or Excusable Nonuse of a Mark under Section 8
• Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9
• Declaration of Incontestability of a Mark under Section 15
• Section 7 Request for Amendment or Correction of Registration Certificate
• Surrender of Registration for cancellation
• Request to Divide Registration
• Section 12(c) Affidavit
• Declaration of Use and Excusable Nonuse under Section 71
• Combined declaration of use & incontestability under Sections 71 &15

Assignment Forms

• Assignments
• Change of name
• Other conveyances of title

You can file your assignment online through Assignment Center at https://assignmentcenter.uspto.gov .

Trademark Trial and Appeal Board Forms

• Request for Extension of Time to File an Opposition
• File a New Proceeding (Notice of Opposition; Petition for Cancellation; Appeal of Refusal to Register)
• File Documents in an Existing Board Proceeding

You can file your TTAB submissions online through the Electronic System for Trademark Trial and Appeals (ESTTA) at https://estta.uspto.gov/ .

Madrid Protocol Forms

• Application for International Registration
• Subsequent Designation
• Response to a Notice of Irregularity
• Replacement Request
• Transformation Request
• Combined Declaration of Use & Incontestability under Sections 71 & 15
• Petition to Director for an International Application/Registration

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