How to transfer trademark ownership: What is a trademark assignment?
A trademark assignment is a document signed by the original owner (“assignor) transferring ownership of the trademark to a new owner (“assignee”). In most cases, only the assignor needs to sign the trademark assignment. The USPTO provides a helpful online resource on trademark assignments.
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 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 Intent-To-Use trademark applications are generally not transferable prior to the original applicant submitting evidence of use of the mark by filing a Statement of Use. There are certain exceptions to this rule which will require special language in the trademark assignment to effect a proper transfer of an ITU mark.
Recording signed trademark assignment with USPTO
An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner(s) to the new owner(s). This will enable the public to search and recognize the new trademark 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.
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 a 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.
How much does a trademark assignment cost?
Our firm charges a flat fee of $500 for drafting a standard trademark assignment (e.g., no license-back or special provisions) and $265 per trademark against which the assignment will be recorded. The USPTO fee is $40 for the first mark, and $25 for the second and subsequent marks.
So, the total cost for preparing and filing a trademark assignment for a single mark would be $805.
For multiple marks, we would draft a single assignment and thus charge the flat rate for drafting only once. Our fixed fee for recording would be charged for each trademark filing to be transferred.