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Trademark assignment agreements: managing rights post-brexit.

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Since the UK’s departure from the EU, there has been a significant rise in the number of trademark assignment recordals against UK registrations taking place as EU trademark owners are now required to manage these rights separately, says Trademark Paralegal Megan Taylor.

In order for transfers of ownership to be recorded, businesses must provide a copy of the relevant document assigning their ownership, to ensure that a valid transaction has taken place under the laws of England and Wales. It is important to ensure the transfer is a valid transaction as the mark could be the basis of, or subject to, future disputes where questions around its validity could be raised and result in a possible loss of costs. 

What makes a transaction valid in the UK?

Despite s.24(3) of the Trade Marks Act 1994  (TMA) stating that a trademark assignment is considered effective if it is in writing and signed on, or behalf of, the assignor (or their representative), there are other laws relating to the transfer of property which must be considered; for example, statutes that pre-date the TMA. One such statute is the Law of Property (Miscellaneous Provisions) Act 1989 which sets out the requirements for a valid Deed for transfers of ownership between individuals. Similarly, the Companies Act 2006 provides guidance in relation to Deeds executed by a company.

It is also important to note that while EU member states can rely on their codified national laws for transferring property within the EU, the UK also incorporates Common Law into its judicial system. The relevant laws here being the Law of Contracts.

Deeds v Assignments

When ownership of a trademark registration is transferred as part of a larger transaction, a copy of the relevant extract of the larger agreement is sufficient to proceed with the recordal. 

However, in other instances, there may be no formal transaction in place or a confirmatory document may be required to simplify or clarify the transfer of any IP right specifically. In these cases, a separate trademark assignment (or other IP assignment) document should be drafted for execution by the parties.

In the UK, there are two types of document that enable the transfer of ownership of property – a deed of assignment and an assignment agreement, the latter also being known as a contract. While both documents are typically in writing, contain a title to confirm the document type and express the intentions of both parties, one of the most distinguishable requirements for a deed is the execution. In addition to the document being signed by both parties, for a deed to be effective both signatures must also be fully witnessed owing to there being no consideration.

Alternatively, the relevant parties may have an assignment agreement drafted. The laws governing contracts in the UK derive from the courts and are therefore formed under Common Law. In order to be a valid contract, there must be four main elements: an offer, acceptance of that offer, an intention to create legal relations and consideration (in other words, what each party gains from the contract). When it comes to formalising this contract, it is vital that the consideration is contained in the document, even if the sum is £1. If this is not included, the document cannot be treated as a valid contract.

Change of name requirements 

Furthermore, it should be noted that where a company number or legal status of a business has changed as the result of a change of name, the transaction should be recorded as an assignment and not a change of name. This is due to the fact that the entity that owns the mark has changed and is no longer the same entity as the prior owner. However, there is no need to evidence this change with a Deed or Agreement to record this at the UKIPO, as a commercial extract will suffice.

Key points to consider

When reviewing ownership portfolios or selling IP post-Brexit, it is important to consider the following:

  • Is there consideration?  Determine whether you are transferring the property as a Deed or under an Agreement – different document types may be more beneficial depending on the circumstances of the transaction.
  • Seek advice before executing.  Our local associates can confirm whether the document is compliant with national laws. With our reach, we may also be able to provide a suitable single document to cover multiple jurisdictions, saving you and/or your client(s) a huge amount of associated costs.
  • If unsure, just ask.  We are at your disposal and happy to help facilitate easy execution, provide legal certainty, and save time in the long run.
  • Take caution with local legal wording.  Even if something is titled a ‘Deed’, it is not always the case.
  • Be careful not to exclude crucial details.  For example, something seemingly insignificant missing from an assignment document can render the whole agreement invalid. In the UK, even the phrase “ In consideration of £1 (one Pound Sterling) the receipt of which is hereby acknowledged ”, or a “peppercorn” as it is nicknamed, as a metaphor for a very small cash payment or other nominal consideration, used to satisfy the requirements for the creation of a legal contract.

Get in touch with our UK Trademark experts for further advice on how to manage trademark assignments post-Brexit.

Megan Taylor is a Trademark Paralegal and Luke Portnow is a Trademark Attorney at Novagraaf in the UK.

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Home FURTHER CONSIDERATIONS ON TRADEMARKS CONTRACTS RELATED TO TRADEMARKS Trademark assignment: what it is and how to do it

Trademark assignment: what it is and how to do it

Do you know that a trademark can be sold? Let’s see in detail what is a trademark assignment (of a trademark which has been filed or registered)

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In this post we talk about:

Trademark assignment: what the law provides for in Italy

Total trademark assignment, partial trademark assignment, assignment of an unregistered trademark, difference between to assign and to licence a trademark, trademark assignment and safeguard of consumer, assignment of ue trademark, how to do the assignment of a trademark.

With the trademark assignment the owner transfers the ownership of its trademark to another subject , who becomes the new owner.

The agreement will indicate the price of the assignmemt (given by the  economic value of the brand ), which can be paid in one lump sum or in more instalments.

Article 23, 1) of the Italian Industrial Property Code, relating to the trademark assignment, provides that:

“A trademark may be assigned in respect of all or part of the products or services for which it is registered”.

Contrary to the past, a trademark may be assigned without any obligation to assign the company or a branch of the company .

The trademark and the company can circulate separately and the trademark can be freely assigned.

The only link between brand and company is that provided by the Italian civil code (article 2573, paragraph 2), according to which the trademark consisting of a figurative sign, a fancy name or a derivative company is presumed transferred together with the company : it is, in fact, a presumption and not an obligation.

When you assign a trademark which includes more products or services, you are not obliged to assign all of them. It is possible to assign only a part of them ; in these cases it is spoken of a partial trademark assignment .

Let’s take into consideration that it is possible to assign or to licence also the unregistered trademark ( trademark not registered and not filed, but only used ): obviously, in the estimation of the trademark’s value, its non-registration could be make lower its price .

The difference between a trademark assignment and a trademark licence is that with the assignment you transfer the ownership, while with the licence you continue having the ownership of your trademark and you only give another subject the possibility of using it.

It should be noted, however, the provision of Article 14, 2 a) of the Italian Industrial Property Code, according to which:

“A trademark is revoked if, due to the context within which it is used by its holder or with his consent in respect of products or services for which it is registered, it ha become such as to deceive the public, particularly as to the nature, quality or geographical origin of the products or services”

Thus, there is a limit that is the truth of the brand and the safeguarding of the public , which should not be in any way misled as a result of the assignment of trademarks’ ownership. In practice, you can take some precautions to prevent the deception , including, for example:

  • to inform the public of the change of ownership;
  • to maintain the quality of the product.

The Court of Milan (judgment of September 10, 2003) has stated in favor of the argument that the change of ownership requires the assignee to maintain the same level of quality of the product that was identified by the assigned trademark.

As for the object of the assignment, while it is obvious the possibility of a partial assignment of the brand, there are some doubts about the possibility of assigning separately (namely to different owners) similar goods .

Also in this case the problem is the preservation of the public and the need to ensure that consumer, being in front of similar products, may mistakenly believe that they come from the same manufacturer.

Article 1, 2) of the European Union Trademark Regulation provides that:

“A EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, not shall its use be prohibited, save in respect of the whole Union”.

The unitary character means that the proprietor of EU trademark may assign the same in full (namely for the entire territory of the European Union) and not only for some States.

Another important article in the field of the assignment of EU trademark is Article 20 of the European Union Trademark Regulation:

“A EU trademark may be transferred, separately from any transfer or undertaking, in respect of some or all the goods or services for which it is registered”

This means that if you use your EU trademark both for clothing and for watches but you do not want anymore about watches, you can sell you brand for watches and you can keep the property for clothing.

Also for this type of trademark, then, we recognize the legitimacy of the assignment without any obligation or transfer of a branch of company, as well as we admit the legitimacy of the partial assignment.

Article 20, 4) e 11) states that:

“On request of one of the parties a transfer shall be entered in the Register and published. As long the transfer has not been entered in the Register, the successor in title  may not invoke the rights arising from the registration of the EU trademark”.

The assignment of a trademark must be entered in the Register of the Italian Patent and Trademark Office , if the trademark is Italian. The trademark must be entered in the Register of EUIPO , if it is an EU trademark.

We suggest you to get in touch with an IP expert (IP consultant or IP law firm) specializing in drafting of trademark assignment agreements which:

  • will assist you in drafting the right contract
  • will help you in evaluating each item of the contract
  • will assist you in negotiating with the other party
  • will assist you in fulfilling all the obligations concerning the assignment of the trademark
  • will take care to enter the contract in the Register

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Eva Troiani

Eva Troiani (Attorney At Law)

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The texts in this database are only for informational and scientific purposes and they are not to be considered official; we therefore decline any responsibility for possible errors or inaccuracies. All mentioned trademarks belong to their legitimate owners; trademarks, product names, trade names and the images of the products are the property of their respective owners. They are used in this database only for informational purposes, without any purpose of violating existing rights of others. The information you obtained at this site is not, nor is intended to be, legal advice. You should consult Ms. Eva Troiani and/or a trademark attorney and/or an attorney at law handling with intellectual property for individual advice regarding any legal questions that you may have.

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What Is the Process of Trademark Assignment?

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Firstly, an application to register a trademark must be filed with the European Union Intellectual Property Office (EUIPO). The application must include information about the applicant, the goods and services that the trademark will be used to identify, and a sample of the trademark. Once the application is accepted, the EUIPO will assign a registration number to the trademark.

Secondly, the trademark must be published in the Official Gazette of the European Union. This is to inform the public that the trademark has been registered  , and to give other parties the opportunity to make objections.

 Thirdly, the trademark must be examined by the EUIPO. This examination will assess whether the trademark is eligible for registration, and whether it is similar to any existing trademarks. If any objections are raised during this stage, they must be addressed before the trademark is registered.

Fourthly, the trademark must be registered by the EUIPO. This is done by issuing a registration certificate, which serves as proof that the trademark is owned by the applicant. The registration certificate includes details such as the registration number and the date of registration.

 Finally, the trademark must be assigned to the new owner. This can be done either by an assignment agreement, or by a transfer of ownership through a deed of assignment. The assignment agreement must be signed by both parties, and must include information such as the parties’ names, the trademark registration number, and a description of the goods and services that the trademark will be used to identify. The deed of assignment must be registered with the EUIPO.

To conclude, once the trademark has been assigned to the new owner, the EUIPO will update its records to reflect the new owner. The new owner will then be able to use the trademark to identify their goods and services in the European Union.

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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Documents required for recording assignments at the United Kingdom Intellectual Property Office

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Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

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  • November 2023

Practical aspects regarding the assignment of the trademark registered at EUIPO. Total vs. partial assignment.

Assignment of a trademark is the process by which the owner of a trademark transfers ownership rights over it to another party. The transfer of rights may be made for consideration (against a price), free of charge, or by donation or will. This process may involve the assignment of the trade mark in its entirety or may be carried out in part, affecting only certain classes of goods or services for which the mark is registered.

Short history

Initially, brands were closely associated with commercial origins and product quality according to modern regulations. The original idea was that a trade mark could not be transferred separately and had to be linked to goodwill or the entire assets of the trader, according to the principle of trade mark connection. This principle persisted even after the main function of the brand became the guarantee of quality. However, the restriction proved ineffective and even harmful, allowing circumvention by renouncing the trademark and subsequent registration. With the increase in the value of the trademark, several legislations, including the one in Romania, have adopted the principle of free assignment of the trademark, allowing its transmission independently of goodwill. Thus, at present, Romanian legislation expressly enshrines the principle of trademark transferability, regardless of goodwill.

Article 47(2) of Law No 84/1998 on trademarks and geographical indications brings important clarifications on the possibility of transferring trademark rights by assignment, offering flexibility to the parties involved in this process: “the transfer by assignment of trademark rights may be made for all or part of the goods or services for which the trademark is registered.”

Brand assignment is an important tool in the business world, allowing companies to leverage their intangible brand asset for financial or strategic purposes. When a trade mark is assigned, the new proprietor acquires exclusive rights to that trade mark and may use the symbols and distinguishing signs associated with it in connection with his goods or services.

Partial assignment

An interesting situation arises when talking about partial assignment of the trademark, where not all classes of goods or services for which the trademark is registered are transferred. This type of divestment can take place in various contexts, such as restructuring a company or focusing on specific product lines.

The partial assignment of the trade mark can bring significant benefits for both the assignor (the transferor) and the assignee (the new proprietor). Through the selective transfer of rights, the assignor retains control of other classes of goods or services, while the assignee enjoys exclusive rights over the selected categories.

Suppose a company, called XYZ Apparel, owns a trademark for “XYZ” covering both clothing (Class 25) and perfumery and cosmetics (Class 3). The company decides to make a partial divestment of the brand in order to focus more effectively on its core activities.

XYZ Apparel decides to partially assign trademark rights for perfumery and cosmetics products to ABC Beauty, a company specializing in premium cosmetics. Through this partial assignment, XYZ Apparel still retains the rights to the “XYZ” brand in respect of clothing, but ABC Beauty obtains the exclusive rights to use the same brand in the promotion and marketing of their cosmetic products.

Thus, the assignor (XYZ Apparel) initially had rights to both classes (Class 25 and Class 3), and by partial assignment, transfers only the rights for Class 3 to the assignee (ABC Beauty), while still maintaining its rights for Class 25. This example illustrates how a company can manage its brand portfolio, making a partial divestment to specialize or allowing other companies to leverage brands in specific areas.

Conclusions In conclusion, brand assignment is an essential tool in managing and capitalizing on a company’s intangible assets. Offering flexibility through the possibility of partial assignment, EU legislation reflects the modern approach to the transmission of trademark rights. This strategic process not only facilitates restructuring and specialization, but also stimulates innovation and collaboration between entities, thus reinforcing the importance of brands in the contemporary economy.

If you want to benefit from specialized assistance in drafting the trademark assignment contract and carrying out the transfer steps to EUIPO, Tas Agency is available at the phone number: 0745160163 or at the e-mail address: [email protected] .

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Assignments, Name and Address Changes of European Union Trade Marks

  • Usually we do not charge for name and / or address changes in a file, if we can charge for an assignment in the file at the same time.
  • Usually we do not charge for address changes in a file, if we can charge for a name change in the file at the same time.
  • Usually we do not charge an additional fee for taking over representation of a file, if we can charge for an assignment, or a name or address change at the same time.
  • We charge name and address changes on a per-ID basis. The EUIPO assigns an ID to each person-address combination.

For registering a name and / or address change, the European Union Intellectual Property Office (EUIPO) does not require any documents for proving this change. However, kindly let us have a commercial register print out or a translation thereof in the English language proving this change, if at hand. In any case we need to know the new name and / or new address.

For registering a transfer the EUIPO requires production of documents providing evidence of such transfer, e.g. a PDF copy of the original executed assignment.

In case we do not yet represent the European Union trademark (application) kindly note below comment.

Assignment contract samples are available on our homepage.

If you have / your client has already executed an assignment contract and the contract is neither in the English nor German language, please send us an English or German language Google-translation and a copy of the original assignment.

Representation

In case we do not yet represent the European Union trademark (application) we need to take over representation when requesting the transfer or name and / or address change. Usually we do no t need any written Power of Attorney (PoA).

Time required

In a typical case it takes just two days from requesting the registration of a name and / or address change, and about one week from requesting the registration of a transfer up until we receive a letter of the EUIPO confirming the registration.

The EUIPO neither issues a certificate of registration nor an additional certificate for the new owner.

(No) requirement for registering a transfer, name and / or address change

In case a new owner of the European Union trademark (application) does not register a transfer, the new owner of the European Union trademark (application) may not sue an alleged infringer without requesting the recordal of the transfer. In the forefront of an infringement law suit, there is usually enough time to file this request. So there is little disadvantage if a new owner fails to request to update the register.

This page should not be construed as legal advice. No responsibility is accepted for the correctness of the official fees. The attorney's fees indicated on this page are minimum charges of the law firm Dr.-Ing. Hellmich which may be raised in urgent cases. This page does not constitute an offer but rather "invitatio ad offerendum" (invitation to make an offer).

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United States Patent and Trademark Office - An Agency of the Department of Commerce

Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

  • I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
  • I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: 

  • A critical piece of information was omitted from the cover sheet. 
  • The document is illegible or not scannable. 
  • The information on the cover sheet and the supporting document do not match. 
  • The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

  • Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
  • Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

  • Go to TSDR .
  • Enter the application serial number or registration number.
  • Select the “Status” button.
  • Scroll down to the “Current Owner(s) Information” section. 
  • Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

  • If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
  • If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
  • If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

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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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EU AI Act: first regulation on artificial intelligence

The use of artificial intelligence in the EU will be regulated by the AI Act, the world’s first comprehensive AI law. Find out how it will protect you.

A man faces a computer generated figure with programming language in the background

As part of its digital strategy , the EU wants to regulate artificial intelligence (AI) to ensure better conditions for the development and use of this innovative technology. AI can create many benefits , such as better healthcare; safer and cleaner transport; more efficient manufacturing; and cheaper and more sustainable energy.

In April 2021, the European Commission proposed the first EU regulatory framework for AI. It says that AI systems that can be used in different applications are analysed and classified according to the risk they pose to users. The different risk levels will mean more or less regulation. Once approved, these will be the world’s first rules on AI.

Learn more about what artificial intelligence is and how it is used

What Parliament wants in AI legislation

Parliament’s priority is to make sure that AI systems used in the EU are safe, transparent, traceable, non-discriminatory and environmentally friendly. AI systems should be overseen by people, rather than by automation, to prevent harmful outcomes.

Parliament also wants to establish a technology-neutral, uniform definition for AI that could be applied to future AI systems.

Learn more about Parliament’s work on AI and its vision for AI’s future

AI Act: different rules for different risk levels

The new rules establish obligations for providers and users depending on the level of risk from artificial intelligence. While many AI systems pose minimal risk, they need to be assessed.

Unacceptable risk

Unacceptable risk AI systems are systems considered a threat to people and will be banned. They include:

  • Cognitive behavioural manipulation of people or specific vulnerable groups: for example voice-activated toys that encourage dangerous behaviour in children
  • Social scoring: classifying people based on behaviour, socio-economic status or personal characteristics
  • Biometric identification and categorisation of people
  • Real-time and remote biometric identification systems, such as facial recognition

Some exceptions may be allowed for law enforcement purposes. “Real-time” remote biometric identification systems will be allowed in a limited number of serious cases, while “post” remote biometric identification systems, where identification occurs after a significant delay, will be allowed to prosecute serious crimes and only after court approval.

AI systems that negatively affect safety or fundamental rights will be considered high risk and will be divided into two categories:

1) AI systems that are used in products falling under the EU’s product safety legislation . This includes toys, aviation, cars, medical devices and lifts.

2) AI systems falling into specific areas that will have to be registered in an EU database:

  • Management and operation of critical infrastructure
  • Education and vocational training
  • Employment, worker management and access to self-employment
  • Access to and enjoyment of essential private services and public services and benefits
  • Law enforcement
  • Migration, asylum and border control management
  • Assistance in legal interpretation and application of the law.

All high-risk AI systems will be assessed before being put on the market and also throughout their lifecycle.

General purpose and generative AI

Generative AI, like ChatGPT, would have to comply with transparency requirements:

  • Disclosing that the content was generated by AI
  • Designing the model to prevent it from generating illegal content
  • Publishing summaries of copyrighted data used for training

High-impact general-purpose AI models that might pose systemic risk, such as the more advanced AI model GPT-4, would have to undergo thorough evaluations and any serious incidents would have to be reported to the European Commission.

Limited risk

Limited risk AI systems should comply with minimal transparency requirements that would allow users to make informed decisions. After interacting with the applications, the user can then decide whether they want to continue using it. Users should be made aware when they are interacting with AI. This includes AI systems that generate or manipulate image, audio or video content, for example deepfakes.

On December 9 2023, Parliament reached a provisional agreement with the Council on the AI act . The agreed text will now have to be formally adopted by both Parliament and Council to become EU law. Before all MEPs have their say on the agreement, Parliament’s internal market and civil liberties committees will vote on it.

More on the EU’s digital measures

  • Cryptocurrency dangers and the benefits of EU legislation
  • Fighting cybercrime: new EU cybersecurity laws explained
  • Boosting data sharing in the EU: what are the benefits?
  • EU Digital Markets Act and Digital Services Act
  • Five ways the European Parliament wants to protect online gamers
  • Artificial Intelligence Act

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USPTO’s New Assignment Center

Fox Rothschild LLP

The United States Patent and Trademark Office (USPTO) has announced the retirement of its Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) and the launch of its new Assignment Center . According to the USPTO’s alert, this system will provide one central streamlined location for submitting and tracking all patent and trademark assignment submissions, will give users the most efficient and up-to-date digital tools, and will offer step-by-step guidance and easy-to-use editing capabilities. 

How-to guides on using Assignment Center for patents and trademarks , as well as training videos on each part of the process, are available to help ensure a smooth transition to the new system. You can assess the new Assignment Center and helpful resources here .

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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  1. Forms and Filings

    Apply for an EU trade mark (Fees start from €850) Apply online Apply for a Community design (Fees start from €350) Apply online Renewal, recordal, conversion, inspection and change of representative (Fees may be charged) Apply online File a notice of opposition (Fees may be charged) Apply online Change of owner details Learn how

  2. Trade mark and Design guidelines

    This formal requirement for the validity of the transfer of an EUTM is applicable irrespective of whether, under the national law governing transfers of (national) trade marks, an assignment is valid without observing a particular form, such as the need for the transfer to be in writing and have the signatures of both parties.

  3. 7.4 Transfer of ownership

    EUTM registrations and applications may be transferred from the previous proprietor/applicant to a new proprietor/applicant, primarily by way of assignment or legal succession. The transfer may be limited to some of the goods and/or services for which the mark is registered or applied for (partial transfer).

  4. EUIPO Guidelines

    This formal requirement for the validity of the transfer of an EUTM is applicable irrespective of whether, under the national law governing transfers of (national) trade marks, an assignment is valid without observing a particular form, such as the need for the transfer to be in writing and have the signatures of both parties.

  5. Licensing and selling intellectual property in the EU

    by the European IPR Helpdesk. Assignments: Selling your patents, trademarks and other IP . You can transfer the ownership of your intellectual property rights (patent, trade mark, copyright, etc.) by assigning/transferring your IP. With an IP assignment, you transfer all rights you initially possessed for the piece of intellectual property ...

  6. EU trade mark legal texts

    Overview EU trade mark legal texts EU trade mark legal texts On this page you will find the regulations that govern the EU trade mark system as well as the EU directive approximating the laws of the EU Member States relating to trade marks. Also, available are links to earlier versions of the relevant legal texts and other resources. Regulations

  7. Trade marks

    The information for IP beginners gives you the basics about trade marks and designs and will help you navigate through the different stages of the life cycle of your trade mark or design. If you're interested in more details, please check out our Guidelines. If you have any doubts at all, please seek the advice of an IP professional.

  8. Trademark assignment agreements: managing rights post-Brexit

    10 May 2022 Since the UK's departure from the EU, there has been a significant rise in the number of trademark assignment recordals against UK registrations taking place as EU trademark owners are now required to manage these rights separately, says Trademark Paralegal Megan Taylor.

  9. European Union trademarks: filing and registration

    European Union trademark information: who can file an application, what trademarks can be protected, how the EUIPO procedure works. Menu ... Assignment. Assignment of a European Union trademark is permitted only for the entire territory of the European Union. However, the trademark may be assigned for only part of the goods and/or services. ...

  10. Trademarks in the EU: How to register & what they protect

    Contact your national office. Open as an external link. . If you only trade in Belgium, the Netherlands or Luxemburg, you should register your trade mark. Open as an external link. at the Benelux Office for Intellectual Property. Open as an external link. (BOIP). This gives you protection in these three countries.

  11. Trademark assignment: what it is and how to do it

    With the trademark assignment the owner transfers the ownership of its trademark to another subject, who becomes the new owner. The agreement will indicate the price of the assignmemt (given by the economic value of the brand ), which can be paid in one lump sum or in more instalments. Trademark assignment: what the law provides for in Italy

  12. The European Union's trademark system

    The European Union trademark registration procedure is carried out before the EUIPO (European Union Intellectual Property Office), the EU agency in charge of registering EU trademarks and community designs, has been based in Alicante since 1994. The centralization of the registration procedure means that the trademark applicant only has to pay ...

  13. European Union Intellectual Property Office (EUIPO)

    Apply for a European trademark; Apply for a registered community design (equivalent to a U.S. design patent); The EUIPO issues registrations for trademarks and registered community designs (RCDs) that have effect throughout the European Union (EU). These intellectual property rights are valid across all member states of the EU, but are separate rights from the trademark and design rights ...

  14. Register trademark in the EU

    Assignment of an EU trademark € 125 We assist you in recording the assignment of your EU trademark. A Trademark Assignment is a transfer of an owner's rights, title, and interest in a trademark or service mark to another party.

  15. TRADE MARK GUIDELINES

    The Guidelines on EU trade marks and the Guidelines on registered Community designs that are currently in force were adopted by the Executive Director on 08/02/2021 22/03/2022 (Decision No EX-21-1), and entered into force on 01/03/2021. EX-22-1), and entered into force on 31/03/2022. The Office's Guidelines can be accessed in the five working ...

  16. Trademark Assignment: Practical guide to Buying or Selling a ...

    Title of the assignee (for the EU). Trademark Assignment Fees, Government Fees and Timelines. TRADEMARK ANGEL's professional fee for the entire trademark assignment process in the US, UK and ...

  17. What Is the Process of Trademark Assignment?

    The assignment agreement must be signed by both parties, and must include information such as the parties' names, the trademark registration number, and a description of the goods and services that the trademark will be used to identify. The deed of assignment must be registered with the EUIPO.

  18. Recordal of assignments of UK Trade Marks

    The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form TM16. Form TM16 requires the following details: - trade mark number (s) - the full name of the current registered owner (s)

  19. Practical aspects regarding the assignment of the trademark registered

    This process may involve the assignment of the trade mark in its entirety or may be carried out in part, affecting only certain classes of goods or services for which the mark is registered. ... Offering flexibility through the possibility of partial assignment, EU legislation reflects the modern approach to the transmission of trademark rights

  20. European Union trade mark assignments, name and address changes

    Assignments, Name and Address Changes of European Union Trade Marks Costs Office (€) Attorney (€) 1 st European Union trade mark (application) 2 nd and each further European Union trade mark (application) in a single request assignment or transfer - 250 175 name and/or address change - 170 - We charge assignments and transfers on a per-file basis.

  21. Trademark assignments: Transferring ownership or changing your name

    Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change.

  22. EUIPO Guidelines

    We use cookies on our website to support technical features that enhance your user experience. We also use analytics. Click for more information

  23. Assignment of Trademark

    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.

  24. EU AI Act: first regulation on artificial intelligence

    As part of its digital strategy, the EU wants to regulate artificial intelligence (AI) to ensure better conditions for the development and use of this innovative technology. AI can create many benefits, such as better healthcare; safer and cleaner transport; more efficient manufacturing; and cheaper and more sustainable energy.. In April 2021, the European Commission proposed the first EU ...

  25. USPTO's New Assignment Center

    The United States Patent and Trademark Office (USPTO) has announced the retirement of its Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) and the ...