This trademark assignment is between
The Assignor is the owner of certain intellectual property rights, including the trademarks listed on Exhibit A, and all goodwill of any business connected to or symbolized by those (collectively, the "Trademarks").
The Assignor wishes to sell to the Assignee all of its interest in the Trademarks.
The parties therefore agree as follows:
1. ASSIGNMENT OF TRADEMARKS.
The Assignor hereby sells its entire and exclusive interest in:
- (a) the Trademarks;
- (b) the registrations of and applications for registrations of each Trademark;
- (c) the goodwill of any business connected with or symbolized by each Trademark;
- (d) income, royalties, and damages payable to the Assignor and related to the Trademarks, including payments for past or future infringements or misappropriations of the Trademarks; and
- (e) all rights to sue for past, present, and future infringements or misappropriations of the Trademarks.
2. PAYMENT.
As consideration for the assignment of the Trademarks and the Assignor's representations, the Assignee shall pay the Assignor
3. RECORDATION.
In order to record this assignment with the United States Patent and Trademark Office, within
4. NO EARLY ASSIGNMENT.
The Assignee may not assign or otherwise encumber its interest in the Trademarks or any associated trademark registrations until it has made the payment in subsection (a) to the Assignor. Any assignment or encumbrance contrary to this provision shall be void.
5. ASSIGNOR'S REPRESENTATIONS.
The Assignor hereby represents to the Assignee that it:
- (a) is the sole owner of all interest in the Trademarks;
- (b) has not assigned, transferred, licensed, pledged, or otherwise encumbered the Trademarks, or agreed to do any of these;
- (c) has full power and authority to enter into this assignment and make the assignment in section 1;
- (d) is not aware of any violation, infringement, or misappropriation, or claim of any of these, of any third party's rights by the Trademarks;
- (e) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
- (f) was not acting within the scope of employment of a third party when conceiving, creating, or otherwise performing any activity related to, the Trademarks.
The Assignor shall immediately notify the Assignee if any facts or circumstances arise that would make any of these representations inaccurate.
6. ADDITIONAL DOCUMENTS.
On request, the Assignor shall:
- (a) provide the Assignee with a complete copy of all documentation (in any format) relating to the Trademarks for the Assignee's own use, to meet record-keeping requirements of the Assignee, or to allow the Assignee to assert its rights as granted under this assignment; and
- (b) execute and deliver to the Assignee any additional papers, including any separate assignments of the Trademarks, and perform all lawful acts necessary to record the assignment in the United States and throughout the world.
7. INDEMNIFICATION.
(a) any third-party claim that a Trademark or its use, assignment, sale, or reproduction infringes or misappropriates a trademark, trade secret, or other intellectual property; (b) any third-party claim that this assignment conflicts with or breaches any agreement, encumbrance, or other obligation to which the Assignor is a party or of which the Assignor has knowledge; (c) any claim relating to any past, present, or future use, licensing, distribution, marketing, disclosure, or commercialization of a Trademarks by the Assignor; and (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to (a), (b), or (c) above. (a) If a Trademark infringes on a third party's United States trademark or trade secret, the Assignor shall indemnify the Assignee against that claim, if all of the following are true: (1) the Assignee promptly notifies the Assignor of that claim; (2) the Assignor controls the defense and settlement of that claim; (3) the Assignee cooperates fully with the Assignor in connection with the Assignor's defense and settlement of that claim; and (4) if requested by the Assignor, the Assignee stops all sales, distribution, and public use of the infringing Trademarks.
(b) If the Assignee is enjoined from further use of an infringing Trademark or if the Assignee stops using any Trademark pursuant to the Assignor's request (as described in (a)(4) above), the Assignor shall, at its own expense and option: (1) obtain the right for the Assignee to continue to use the infringing Trademark; (2) modify the infringing Trademark to eliminate the infringement (if possible); (3) provide a substitute noninfringing Trademark to the Assignee under this assignment (if possible); or (4) refund the amounts paid to the Assignee under this assignment for the infringing Trademark, on terms and conditions agreeable to the parties.
(c) The Assignor will have no other obligations or liability if infringement occurs, and will have no other obligation to indemnify the Assignee in case of infringement. The Assignor will not be liable for any expenses incurred without its prior written authorization and will have no obligation to indemnify the Assignee if the infringement is based on: (1) any modified form of the Trademarks not made by the Assignor or (2) the laws of any country other than the United States of America or its states.
8. GOVERNING LAW.
- (a) Choice of Law. The laws of the state of
govern this agreement (without giving effect to its conflicts of law principles). - (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in
County, .
9. COUNTERPARTS; ELECTRONIC SIGNATURES.
- (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
- (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.
10. SEVERABILITY.
If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.
11. NOTICES.
- (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
- (b) Addresses. A party shall address notices under this section to a party at the following addresses:
- If to the Assignor:
- If to the Assignee:
- (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.
12. WAIVER.
No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.
13. HEADINGS.
The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.
14. EFFECTIVENESS.
This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.
15. NECESSARY ACTS; FURTHER ASSURANCES.
Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.
[SIGNATURE PAGE FOLLOWS]
Each party is signing this agreement on the date stated opposite that party's signature.
Date: ________________ |
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| Name: |
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Date:_________________ |
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| Name: |
[PAGE BREAK HERE]
EXHIBIT A
LIST OF TRADEMARKS
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| TRADEMARK / SERVICE MARK | REGISTRATION / APPLICATION NUMBER | DATE OF FILING / REGISTRATION |
[PAGE BREAK HERE]
EXHIBIT B
FORM OF RECORDABLE TRADEMARK ASSIGNMENT
For good and valuable consideration, the receipt of which is hereby acknowledged,
Each party is signing this agreement on the date stated opposite that party's signature.
Date: ________________________ |
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| Name: |
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| NOTARIZATION: | |
| Date: ________________________ | |
| Name: |
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| NOTARIZATION: |
[PAGE BREAK HERE]
ATTACHMENT A [TO EXHIBIT B]
INTELLECTUAL PROPERTY
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| TRADEMARK / SERVICE MARK | REGISTRATION / APPLICATION NUMBER | DATE OF FILING / REGISTRATION |
How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.
Trademark assignment: How-to guide
Trademark assignments are important tools in the complicated world of intellectual property that allow trademark owners to easily transfer their ownership rights from one business to another. Trademark assignment is essential for both corporate transfers of brand assets and individual inventors wishing to safeguard their intellectual property.
The article serves as a helpful manual to assist readers in accurately navigating the formal process of trademark assignment. It goes deep into procedural details and legal requirements, producing an extensive guidebook intended to assist both people and organizations. It also emphasizes how utilizing a trademark assignment template may be extremely simple, enabling stakeholders to transfer trademark ownership and rights with confidence and efficiency.
What is a trademark assignment?
A trademark assignment is a legally binding agreement in which the owner of a trademark (the assignor) transfers its rights to another person (the assignee) through a trademark application at the United States Patent and Trademark Office (USPTO). This transfer includes all related rights, including the ability to use, license, and enforce the trademark.
By signing a trademark assignment agreement, the assignor transfers ownership of the trademark, and the assignee gains all authority and control over it. This process makes it possible for ownership to be transferred in a clear, legal manner, providing certainty to both parties regarding their respective rights and obligations.
The legal process involved in assigning a trademark includes several key steps.
- Drafting the assignment: Create a detailed trademark assignment agreement that specifies all of the transfer's terms and conditions. This agreement must abide by all relevant intellectual property laws and regulations.
- Executing the assignment: After the agreement is written, both parties must execute it by the law, which may involve notarization or the presence of a third-party witness.
- Recordation of the assignment: After execution, the assignee usually sends the agreement to the appropriate authority or patent and trademark office for trademark registration and recording, together with any necessary supporting papers. The act of formally registering or documenting the transfer of ownership of a specific object or piece of property with the relevant authorities is known as recording. Recordation ensures that the necessary legal entities formally acknowledge the transfer of ownership or rights when an assignment occurs, such as with real estate, intellectual property rights, or other assets.
Ensuring the legality and enforceability of the assignment throughout this procedure requires compliance with the legal formalities and pertinent rules.
How much does it cost to file a trademark assignment?
Legal aid may be required in addition to administrative expenses when filing a trademark application. The jurisdiction, the difficulty of the task, and whether or not legal aid is retained all affect the real expenses.
The applicable trademark agency or authority, the United States Patent and Trademark Office (USPTO), often charges administrative costs for the assignment's procedure. These administrative fees can vary, although they are typically low compared to other legal procedures. Additionally, attorney costs will be included in the overall cost if legal aid is requested to prepare or evaluate the assignment agreement.
In this scenario, the free trademark assignment template provided by LegalZoom can help one get started.
How do you assign ownership of a trademark?
Assigning ownership of a trademark involves several key steps:
- Drafting the agreement: Start by creating an extensive trademark assignment agreement that specifies all of the transfer's terms and circumstances. Provide information on the trademark being transferred, the assignor and assignee's names and addresses, the payment for the transfer, and any guarantees or representations.
- Reviewing and editing: Examine the written agreement closely to make sure all the material is correct and comprehensive. Make sure that all words are precisely defined and represent the objectives of both parties by making any required modifications or revisions.
- Execution: Both the assignor and the assignee must sign the agreement after it has been finalized. To authenticate the agreement, signatures may need to be witnessed or notarized, depending on the criteria and preferences set out by law.
- Submission: Send the signed agreement to the appropriate authorities or patent and trademark office for recording. This stage gives the assignee legal recognition as the new trademark owner and formalizes the ownership transfer.
- Keeping records: Preserve accurate documentation of the assignment agreement, including signed copies and any contact with the office. These documents function as evidence of the transfer and may be helpful in the event of disagreements or issues about trademark ownership.
To prevent future disagreements or issues, it is essential to guarantee the completeness and quality of the information provided throughout the assignment process. Verify the information in the agreement again to make sure it is correct and reflects the goals of both parties. Stakeholders can confidently assign ownership of a trademark by carefully following these procedures.
Trademark assignment instructions
Trademark assignment instructions provide a step-by-step guide for completing each section of the trademark assignment document. Here's a brief overview:
- Introduction: Start by introducing the purpose and scope of the assignment. Clearly outline the parties involved (assignor and assignee) and the trademark(s) being transferred.
- Identification of trademark: Provide detailed information about the trademark(s) being assigned, including registration numbers as issued by the World Intellectual Property Organization (WIPO), descriptions, and any associated rights or goodwill.
- Consideration: Specify the consideration or payment for the transfer of ownership of the trademark. This may include monetary compensation, goods, services, or other valuable assets.
- Warranties and representations: Include any warranties or representations made by the assignor regarding the validity of the trademark(s) being transferred. Ensure that these statements are accurate and comply with legal requirements.
- Execution and signature: Clearly outline the process for executing the assignment agreement, including signature requirements for both parties. Ensure that signatures are obtained according to legal requirements.
- Recordation: Provide instructions for recording the trademark assignment with the relevant office or authority. Include any necessary forms or documentation required for recordation.
By following these instructions, stakeholders can complete the assignment process effectively while ensuring compliance with legal requirements and protecting their rights.
Recordation of the trademark assignment
If you wish to transfer ownership, the recordation of a trademark assignment with the appropriate authorities is crucial for several reasons:
Legal recognition: Recording the assignment provides legal recognition of the transfer of ownership. This formalizes the change in ownership and establishes the new trademark owner's rights in the eyes of the law.
Public notice: Recordation serves as public notice of the trademark assignment, alerting third parties to the change in ownership. This helps prevent unauthorized use or infringement of the trademark by providing clarity on who holds the rights to the mark.
Priority: Recordation establishes the priority of ownership, particularly in cases of conflicting claims or disputes. The assignee who records the assignment first typically has superior rights over subsequent claimants.
Enforceability: A recorded assignment is generally more enforceable in legal proceedings. It provides concrete evidence of the transfer of ownership, making it easier for the new trademark owner to assert their rights and defend against infringement.
Preservation of rights: Recordation helps protect the rights of the new trademark owner by ensuring that the assignment is properly documented and recognized by the relevant authorities. This safeguards against challenges to ownership and provides clarity in case of legal disputes.
How long does it take to record a trademark assignment?
The timeline for recording a trademark assignment with relevant authorities can vary depending on several factors:
Processing time: Typically, the trademark office or authority, USPTO, will have its own processing time for recording assignments. This can range from a few weeks to several months, depending on the efficiency of the office and the volume of assignments being processed.
Completeness of documentation: The completeness and accuracy of the documentation submitted with the assignment can affect processing times. Any missing or incorrect information may result in delays as the office requests additional information or clarification.
Potential delays: Delays can occur due to various reasons, such as backlog at the office, administrative errors, or unexpected issues with the assignment documentation. Additionally, if there are any challenges or disputes regarding the assignment, this can prolong the process.
Communication with authorities: Effective communication with the relevant authorities can help expedite the process. Prompt responses to any requests for information or clarification can help avoid unnecessary delays.
Overall, while there is no fixed timeline for recording an assignment, stakeholders should be prepared for potential delays and factor this into their planning. By ensuring that all documentation is complete and accurate and maintaining open communication with the authorities, stakeholders can help minimize delays and expedite the recording process.
Conclusion
In summary, trademark assignment holds significant importance for both individuals and businesses alike. For individuals, it provides an avenue to transfer ownership of a trademark they may have developed, allowing them to monetize their intellectual property or pass it on as part of their estate planning. For businesses, trademark assignment facilitates strategic maneuvers such as mergers, acquisitions, or rebranding efforts, enabling them to consolidate their brand portfolio or expand into new markets.
To guarantee the seamless transfer of trademark rights, minimize potential conflicts, and safeguard the integrity of the brand, it is important to adhere to legal standards and provide comprehensive documentation, regardless of the circumstances. All things considered, trademark assignment is a vital tool that helps people and companies use their intellectual property assets to their advantage for both financial benefit and a competitive advantage in the market.
To speed up the creation of your assignment document, make use of the trademark assignment template that is supplied at the top of this page. Whether you're an individual looking to safeguard your intellectual property or a company owner transferring trademark rights, our template provides an organized format for recording the assignment agreement, making the transfer procedure more accurate and straightforward.
Frequently asked questions
What's a trademark assignment?
A trademark assignment is a legal transaction that involves transferring ownership rights of a trademark from one party to another. Whether you are acquiring or relinquishing trademark rights, this process establishes clear guidelines to ensure fairness and transparency in the exchange of ownership. To complete a trademark assignment, you'll need to provide the following information:
- Details of the current trademark owner, including their name and contact information
- Information about the new trademark owner, including their name and contact information
What is the procedure for trademark assignment?
The procedure for trademark assignment involves transferring ownership rights of a trademark from one party to another through a legally binding agreement. This typically includes drafting a trademark assignment agreement, identifying the current owner and the new owner, specifying the trademark(s) being transferred, determining the consideration for the transfer, obtaining signatures from both parties, and recording the assignment with the relevant office or authority.
Free Trademark Assignment Template
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