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.

If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

  • Trademark Assignment Recordation
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  • How Long Does a Trademark Last
  • Trademark Law
  • Selling Trademarks
  • Trademark Checklist
  • Are All Trademarks and Names Legally Protected
  • Available Trademarks
  • What does Trademark Mean
  • Purpose of Trademark

TRADEMARK ASSIGNMENT & TRANSFER FEES CALCULATOR

A trademark assignment is a process where ownership of and rights to a trademark are transferred to another person.

You can only assign (transfer) a registered trademark by executing an agreement called the Trademark Assignment Agreement and then registering that assignment with the Trademarks Office.

Use the calculator below to get an idea of how much you'll pay in government fees to assign your registered trademark to someone else.

1 WHERE DO YOU WANT TO ASSIGN YOUR TRADEMARK?

Calculate fees to assign and transfer trademark(s) registered in:

fee for assignment of trademark

2 HOW MANY TRADEMARKS DO YOU WANT TO ASSIGN?

3 show results in which currency, so how much does it cost to assign a trademark.

Whether you're transferring yourademark from you personally as an individual to a company you own (or the other way around) or whether it's a transfer between unrelated entities, you need to register it with the same Trademarks Office where the trademark is registered.

This will ensure that the new owner is shown on the website and in all official documents of the Trademarks Office.

The fee for the transfer is nominal at $40 for the first trademark being assigned, with $25 for each additional trademark.

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The following are the trademark fees charged by the United States Patent and Trademark Office.  Patent Fees  are listed separately.

Note that most PTO fees are "per class" - that is, if the goods or services fall under more than one class in the International Classification of Goods and Services, then you must pay a separate fee for each class of goods. For example, if you are selling mugs (Glassware, Class 21) and t-shirts (Clothing, Class 25), you'd need to pay double the filing fees for a single class application. On the other hand, mugs, glasses and plates would fall into just class 21, so filing for these goods would only incur one filing fee. For a list of acceptable goods and services descriptions, with classes, see the " Trademark Identification Manual " on the USPTO website. 

For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO's General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. A complete copy of the USPTO's fee schedule is also available from  their website

Most trademark fees increased,  effective January 14, 2017 . Also, additional fees for filing on paper are imposed for most filings.

Note: these fees are correct as of January 2, 2021. As USPTO fees are subject to change, be sure to check for the latest fees before filing anything. 

The preceding information was retrieved from the USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees.

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Trademark Assignment (Transfer Ownership of a Trademark)

General information.

A trademark (or servicemark) assignment is the transfer of one’s ownership of a mark to another person or entity. The prior owner (assignor) gives up all rights to the mark to the new owner (assignee), who is then expected to maintain the level of quality previously associated on the goods or services represented by the mark.

A federal trademark may be assigned by filing an assignment with the USPTO. Along with the mark itself, the assignment transfers “the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” 15 USC 1060(a)(1) . If the assignment was made through a legal document (such as articles of merger, a will, or a mortgage), that document must be recorded with the USPTO. 37 CFR 3.11(a).

In Kentucky, a registered trademark or servicemark may be assigned to another by filing an assignment with the Kentucky Secretary of State’s office. Along with the mark itself, the assignment transfers “the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark.” KRS 365.583(1) . If the assignment was made through a legal document (such as articles of merger, a will, or a mortgage), that document may be recorded with the Secretary of State. KRS 365.584(3) .

Purpose/Necessity

An assignment may be used:

  • After a business is sold and the mark’s rights are transferred to the purchaser
  • As security for a debt (through a mortgage or other security interest)
  • As a bequest in a will or an asset passed to heirs by intestacy/probate
  • As part of the distribution of assets following a bankruptcy proceeding
  • The mark’s owner retains ownership but changes his or her name
  • The mark’s owner retains ownership but changes its business name or entity type
  • Any other instance where the owner of a mark wishes to transfer it to another

Recording an assignment provides the following advantages:

  • The assignee gains all rights to the mark and will be responsible for making all renewal and maintenance filings , may take legal action to prevent infringing uses of the mark , etc. As the party receiving ownership of the mark, it is logical to transfer these rights and responsibilities to the assignee.
  • An assigned registration will show title and ownership of the mark in the assignee in a federal trademark search or a Kentucky trademark search , as appropriate.
  • A recorded assignment is valid against a subsequent purchaser for valuable consideration without notice. 15 USC 1060(a)(4) and KRS 365.583(1) .
  • By recording the assignment in the Kentucky Secretary of State’s office, a rebuttable presumption as to the validity and execution of the assignment is created. KRS 365.583(4) .

Frequently Asked Questions

  • Federal – Yes, only a filed or registered mark may be assigned. 15 USC 1060(a)(1) .Kentucky – Yes, only a registered mark or an applied-for mark may be assigned. KRS 365.583(1) .This means that the USPTO and the Kentucky Secretary of State will not accept assignments of common law marks, and that mark holder must at least apply for registration before attempting an assignment.
  • Intent to Use applications may only be filed “to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” 15 USC 1060(a)(1) .If an assignment to any other party is sought, the original filer of the Intent to Use application must first place the mark in commerce and then file an Allegation of Use (a Statement of Use or an Amendment to Allege Use).
  • If an individual or business entity has changed its name but retains the same rights in and to a mark, it may file an assignment in the same was as if it were a separate individual or business entity being assigned those rights.
  • An assignment does not extend the mark’s registration period. The assignee will be expected to renew the mark within the 6-month period prior to the mark’s expiration. Failure to renew will cause the registration to expire. KRS 365.581 . The same is true under federal law.

Legal Services Offered and Cost

Federal Trademark Assignment Legal fees: $300 flat fee This includes:

  • Review of client’s information to ensure legal requirements are fulfilled
  • Answer client questions, make corrections, and obtain additional information as needed
  • Completion of Federal Trademark Assignment form to make the assignment, if necessary
  • Completion of Trademark Assignment Recordation Coversheet
  • Submission of the Assignment form or existing legal document, Coversheet, and filing fee with the USPTO
  • Email confirmation of trademark assignment by the USPTO with official USPTO Notice of Recordation

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.

Kentucky Trademark Assignment Legal fees: $300 flat fee

This includes:

  • Completion of Kentucky Trademark/Servicemark Assignment form
  • Submission of form and filing fee with the Kentucky Secretary of State
  • All postage and mailing charges
  • Provide the new Certificate of Registration in the name of the assignee from the Kentucky Secretary of State

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Trademark Assignment: How to Transfer Trademark Ownership

Trademark assignment agreement

Trademarks are valuable representations of the goodwill of your business that connects a specific product to your brand for your consumers. As your startup or business matures (or if you acquire a company) you will likely need a trademark assignment agreement. This is a type of agreement for transferring ownership that provides a variety of business benefits necessary for protecting purchased or transferred trademark rights.

Table of Contents

What Is Trademark Assignment?

A trademark assignment is the formal process for transferring the ownership of a trademark and the associated rights that ownership provides (e.g., use, licensure, further assignment, etc.). Often, a trademark assignment is part of a larger transaction such as an asset purchase agreement or a corporate reorganization.

When Is the Assignment of Trademark Procedure Necessary?

You will need an assignment of trademark any time you are transferring trademarks permanently. Such transfers can be within a larger corporate structure (e.g., from a parent company to a subsidiary), to a family member (e.g., via an estate administration), or to an outside party via sale.

For situations that don’t involve the owner of the trademark transferring to a new owner, you may consider a trademark licensing agreement. Unlike a trademark assignment, a license does not transfer ownership, and instead, gives the rights commonly associated with ownership. For example, you typically see trademark licensing in the context of franchise agreements, merchandising, endorsement deals, etc.

Here’s How to Transfer Trademark Ownership

The process for transferring a trademark via assignment may vary depending on the context of your situation. Relevant to determining the process will be the nature of the transaction along with the relationship between the assignee and assignor. Your checklist will also vary depending on if you are the buyer or seller of the trademark. That said, you will generally consider the following steps for a complete assignment:

  • Due diligence
  • Determine authority to transfer the trademark
  • Execute trademark assignment agreement (What should be included in a trademark assignment form)
  • Complete ancillary agreements necessary to give effect to trademark transfer
  • Notify the U.S. Patent and Trademark Office (USPTO) of change of ownership

1. Due Diligence

Not all trademarks are created equally because of their rights that exist in common law and through statutory law at the state and federal levels. As a result, it’s important to research the trademark status before taking possession. Primarily, you will want to search for its registration number with applicable state and federal agencies (i.e., the USPTO). Having a registered mark improves your ability to enforce against trademark infringement and protect its value after acquisition as part of the goodwill of the business.

2. Determine Authority to Transfer the Trademark

Another integral part of transferring a trademark through an assignment is verifying that the assignor has the authority to transfer the title to the assignee. Your Florida trademark lawyer will be able to help you verify that authority, but you will generally check in two ways. The first will be confirming ownership reflected on trademark registration documents recorded with the USPTO. However, you will also want to confirm that ownership and authority via the business entity organizational documents.

3. Execute Trademark Assignment Agreement

After completing proper due diligence, you will need to execute a trademark assignment agreement. The purpose of the agreement is to provide evidence of the transfer and to allocate rights and obligations among the assignor and assignee.

What Should Be Included in a Trademark Assignment Form?

The contents of your trademark assignment agreement will also depend on the nature of the transaction and the relationship between the original owner and the new owner of the mark. Typically, you will see the following elements with a trademark assignment form contract:

  • Names of the parties and the agreement’s effective date
  • Recitals explaining the circumstance for the trademark transfer (e.g., gift, reorganization, purchase asset agreement, etc.)
  • Consideration for the intellectual property transfer (e.g., value exchanged such as cash, real estate, or other personal property
  • Representations and warranties surrounding past use, current owner, etc.
  • Indemnity surrounding past or future claims related to the use of the trademark
  • Conflict resolution provisions (e.g., mediation, arbitration, governing law, choice of venue, etc.)

4. Complete Ancillary Agreements

As mentioned above, transferring ownership of the trademark is likely part of a larger transaction such as the sale of a company. This fact usually means you will need to complete other contracts and documents for the assignment to be enforceable. To name a few, such documents might include:

  • Asset purchase agreement
  • USPTO forms
  • Assumption of liability agreement
  • Intellectual property licensing agreements
  • Corporate consent resolutions

5. Notify the USPTO of Change of Ownership

Part of a complete assignment of a trademark will require finishing the USPTO application process for a name change on the trademark registration. It’s important to notify the USPTO of the change in ownership and to update contact information for future correspondence related to your trademark. Additionally, maintaining accurate information with the USPTO for your registered trademark is necessary for protecting your trademark rights against infringement, dilution, and other legal issues.

What Are the Implications if a Trademark Transfer Is Not Done Properly?

Failing to properly transfer a trademark from one party to another can lead to exposure and create unnecessary risk. Most of the consequences stem from the fact that improper trademark transfers create confusion about who actually owns the mark. If uncertainty exists about proper ownership, it can make it more difficult to enforce your trademark rights and protect against future trademark infringement or track trademark infringement statute of limitations .

When it appears multiple parties have rights to a trademark, it can also create a risk of trademark dilution (i.e., its use becomes more in the public domain, weakening its proprietary value). As a final point, trademark transfers are usually part of a broader transaction, and failing to properly execute the assignment may jeopardize the success of the whole transaction or, at the least, substantially add to the closing costs.

As detailed above, a trademark assignment form should provide all of the information surrounding the transfer (e.g., party names, effective date, value transferred, warranties, etc.). Additionally, the assignment should provide for more general contract terms related to termination rights, conflict resolution methods, indemnities, and necessary cross-references with any simultaneously entered into agreements.

Need Help with a Trademark Assignment Agreement?

If you are in the process of buying, selling, or otherwise transferring a trademark, then a trademark assignment agreement will be a key document for establishing and protecting those trademark rights. The trademark attorneys at our firm help clients draft and negotiate these agreements along with related legal advice and services such as representations in front of the USPTO.

Contact Cueto Law Group today to properly transfer ownership of a trademark.

Trademark Assignment Template Sample

Below are a PDF and Word version of a trademark consent agreement template that you can review as a trademark assignment agreement sample. As a reminder, these are just sample forms and further modification is likely necessary to meet any particular assignment needs.

Key Takeaways on How to Transfer a Trademark

When transferring a trademark, two fundamentals will be essential for increasing the chances of a smooth transition. The first is having sound documentation and contracts (i.e., an assignment agreement) in place between the assignor and assignee. The second is confirming that all applications and registrations with the USPTO accurately reflect that new proprietorship.

Can You Use an Asset Purchase Agreement in Place of a Trademark Transfer Agreement?

Depending on the complexity of the sale, you may be able to incorporate a trademark assignment into an asset purchase agreement (APA) rather than using a separate trademark transfer agreement. Generally, APAs are much more complex documents, and an assignment agreement is a better vehicle for transferring titles.

How Do I Submit a Trademark Assignment to USPTO?

The USPTO has an Electronic Trademark Assignment System (ETAS) where you can submit and record the transfer of the trademark or simply update name change in ownership (e.g., if you recently married or divorced). Alternatively, you can submit the information via mail using a Recordation Form Cover Sheet.

Do Patent Assignments Need to Be Recorded?

Yes, recording a patent assignment with the USPTO is recommended and sometimes necessary for many of the same reasons why recording a trademark assignment is worthwhile. You can record a patent assignment through a similar USPTO system as you would for a trademark, known as the Electronic Patent Assignment System.

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This publication is available at https://www.gov.uk/government/publications/trade-mark-forms-and-fees/trade-mark-forms-and-fees

1. Apply for a trade mark

Apply for a UK trade mark online or to designate the UK for an International Registration governed exclusively by the Madrid Protocol.

2. Trade mark search services

Use these services to search for other trade marks, track the progress of trade marks or search for classes before you apply.

3. Update trade mark details

Use the TM21B to remove a class, or limit or remove goods or services within a class before a trade mark is registered. The TM26R is to rectify the register for registered trade marks.

4. Update details of the owner or the representative

Use these forms if you need to update personal/representative details for an application. For example, notifying the IPO that you have sold your trade mark, changed address or appointed a representative.

5. Renew or restore a trade mark

Use the TM11 if you need to renew a trade mark online or the TM13 to restore a trade mark.

6. Request documents or information

You can access information about a trade mark for free via the Track a trade mark service.

7. Request for an extension of time

If your trade mark has not yet been registered, you can first speak with your examiner to discuss an extension of time.

8. Appeal an examiner or tribunal decision

You can also speak with your examiner to discuss your options before you decide to appeal.

9. Oppose or defend a trade mark

Use the TM7 to oppose a trade mark or the TM8 to defend a trade mark. If you intend to oppose a trade mark, you can first submit a TM7A to give the applicant notice of your intention to oppose.

10. Ongoing opposition procedure

Use these forms if required during opposition procedures. For example, you can request a cooling off period if both parties wish to seek a negotiated settlement before a defence is filed.

11. Invalidation or revocation

Use these forms if you want to start invalidation proceedings or apply for a trade mark to be revoked. For example, the trade mark owner may not have used goods or services for a trade mark that they stated they would. Use the TM8N to defend against a revocation based on non-use, and the TM8 to defend against all other types of revocation and invalidation.

12. Withdraw or surrender a trade mark

If your trade mark is not yet registered, you will need to withdraw. If your trade mark is already registered, you will need to surrender your trade mark.

13. Record, amend or cancel a security licence

Use these forms if you want to record, amend or cancel a security or licence.

14. Request to merge or divide a trade mark

Use these forms if you want to merge or divide a trade mark.

15. Collective or certification marks

Use these forms for collective or certification marks.

16. Record a concurrent registration or transform a Madrid Protocol Designation

Use these forms to record a concurrent registration or transform a Madrid Protocol Designation.

17. Opt out of holding a comparable trade mark

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Assignment of Trademark

  • Mohit Gulati
  • | Corporate Law - Articles
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  • 20 Jul 2020
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GENERAL UNDERSTANDING:

As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.

Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.

STATUTORY DEFINITION:

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;

WHO CAN ASSIGN A TRADEMARK:

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.

Trademarks Sign on white paper

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.

Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.

  TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr.  X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.

In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.

2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.

In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)  

PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

REGISTRATION OF ASSIGNMENT OF TRADEMARK:

1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)

2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)

3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)

4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )

5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)

6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)

7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-

a) the name and address of the assignee;

b) the date of assignment;

c) where the assignment is in respect of any right in the trademark, a description of the right assigned;

d) the basis under which the assignment is made; and

e) the date on which the entry is made in the register.

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.

In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:

“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.

The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.

In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:

“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”

The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;

√  Registered or unregistered both type of marks can be assigned;

√  Assignment can be with or without the goodwill of the business;

√  Event of assignment asserts the rights and title in an assignee not the registration thereof;

√  Registration of assignment is only prima facie proof of title of trademark;

√  Rights in an assignee exists even before registration of assignment of trademark.

Conclusion: –

Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.

Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.

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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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According to the suit, teams must pay a $27.5 million entry fee to compete in tournaments, give Activision half their revenue from ticket sales and sponsorships and cede to the gaming giant the exclusive right to contract with the most lucrative sponsors and broadcasters.

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In a statement, a spokesperson for the company said the plaintiffs “demanded that Activision pay them tens of millions of dollars to avoid this meritless litigation, and when their demands were not met, they filed.”

According to the complaint, the market for Call of Duty leagues and tournaments was competitive until 2019, with multiple entities — including Activision, GameStop and Major League Gaming — hosting events. They mostly had modest entry fees, which ensured that the best players and teams were able to participate, the suit says.

But that year, the gamers say Activision, which made the title, started to demand top players and teams to agree to “rent-seeking demands and various trade-restraining contractual provisions” that allegedly violate the Sherman Act, an antitrust law that, among other things, bars illegal restraints of trade. Abner says he was forced to sign a contract during a photoshoot “without adequate time to review, despite requesting counsel, and under threat of being excluded from the Activision CoD League absent immediate acquiescence to its terms.”

According to the suit, teams must pay a $27.5 million entry fee to compete in tournaments, give Activision half their revenue from ticket sales and sponsorships and cede to the gaming giant the exclusive right to contract with the most lucrative sponsors, such as Monster Beverage, Mountain Dew and USAA Insurance, and broadcasters.

While players in other pro sports leagues have agreed to salary restrictions as a result of bargaining, esports players are not members of a union and never negotiated for the rules. There are exemptions in antitrust laws for agreements that restrict player salaries and rights if they are arrived at through the collective bargaining process, according to legal experts.

The suit also takes issue with Activision’s acquisition in 2016 of Major League Gaming Corporation, which was the leading organizer of professional Call of Duty tournaments at the time. That purchase was not subject to pre-merger notification requirements and subject to oversight by the Federal Trade Commision.

And because Activision owns the copyright to the game, it refused to grant licenses to organizer and operators of other competitions, the gamers claim.

“Thus, if a team of professional Call of Duty players wanted to continue to compete in professional Call of Duty leagues and tournaments—which is essential to the players’ and teams’ maintaining their ability to secure sponsorships and other “off-field” revenue opportunities—their only choice was to do so in the Activision CoD League on terms dictated by Activision,” writes Eric Rosen, a lawyer for the plaintiffs, in the complaint.

The gamers bring claims for unfair competition and violations of various antitrust laws. They seek at least $100 million and a court order prohibiting further anticompetitive conduct.

Last year, Activision settled a suit brought by the Department of Justice accusing the company of imposing rules that illegally stymied competition for players in two of its esports leagues and suppressed wages. The agency cited a complaint over the so-called competitive balance tax in Activision’s Call of Duty and Overwatch leagues. The rule, which the leagues’ independently-owned teams have to abide by, imposes a tax on teams if their total salaries for players exceed a certain threshold.

Under a settlement, Activision was barred from establishing any rule that would in any way restrict wages for players or penalize a team for going over the salary cap for players.

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