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 November 25, 2020

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

  • Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
  • Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
  • Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
  • If your trademark is state-registered, you must also record the transfer with the applicable state.
  • The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
  • Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

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

By Eric Perrott, Esq.

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

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

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

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

A Trademark Assignment Transfers Trademark Rights

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

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

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

Common Issues with Preparing and Filing Assignments

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

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

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

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

For example:

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

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

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

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

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

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Eric Perrott, Esq.

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

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How to transfer trademark ownership: trademark assignment, how do you transfer ownership of a trademark.

To change the owner of a federal trademark registration or application, a trademark assignment should be signed and recorded with the USPTO. A trademark assignment is a document signed by the original owner (“assignor”) that transfers ownership of the trademark to a new owner (“assignee”). In most cases, the new owner does not need to sign the document because only the assignor signs the trademark assignment to transfer trademark rights. The USPTO offers a helpful online resource on trademark assignments .

Need to transfer trademark ownership? Email Vic at  [email protected]  or call  (949) 223-9623  to see how we can help transfer trademarks. 

How much does a trademark assignment cost?

To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings . The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks .

For multiple marks, we can draft a single trademark assignment to be signed only once. The executed trademark assignment must then be properly recorded against each trademark to be transferred. Contact us to obtain a precise quote for transferring a trademark filing.

What should be included in the trademark assignment?

It is important to specify the details of the trademark(s) to be transferred. The trademark assignment should include:

  • name and address of the new owner (assignee);
  • if the assignee is a company, the type of entity and state of incorporation;
  • specific details of the trademark application(s) and/or registration(s) to be transferred; and
  • language regarding the transfer of goodwill associated with the marks.

If multiple marks are involved, a single trademark assignment may include a schedule that lists all the trademarks to be transferred.

Keep in mind that a license to use a trademark is not the same as transferring ownership of the mark. In a trademark license, the licensor still owns the mark.

Can an ITU application be transferred prior to showing use of the mark?

Trademark assignments can get tricky in Intent-To-Use trademark applications . That’s because an ITU application is generally not transferable before the mark has been used. The USPTO wants to see the original applicant submit evidence of use of the mark by filing a Statement of Use / Amendment to Allege Use before filing a trademark assignment. Certain exceptions to this rule include the transfer of an entire line of business (e.g., business of the original trademark owner is acquired by a new owner). In these special circumstances, a trademark assignment filed before the mark has been used might be acceptable if the assignment contains special language to effect a proper transfer of an ITU mark.

Should trademark assignments be recorded with the USPTO?

An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner to the new owner. This will enable the public to search and recognize the new trademark owner. If the new trademark owner plans to file new trademark applications for marks similar to the assigned trademark, then it would certainly help to show that the registered trademark now belongs to the new owner.

How to search USPTO trademark assignments

The USPTO enables the public to search trademark assignment records online by reel/frame number, serial number, registration number, international registration number, assignor name, assignee name, correspondent name, applicant name or domestic representative.

How to transfer a trademark with a renewal deadline approaching

Should you transfer a trademark regisration first, and then file the renewal of behalf of the new owner? Or, renew first on behalf of the old owner, and transfer the registered trademark? It all depends on whether the old owner or new owner is making use of the mark at the time the renewal is filed.

What should the new trademark owner do?

The assignee should be diligent in tracking any deadlines for responding to outstanding Office Actions and renewing any registered marks. Typically, this can be forwarded to an experienced IP firm who will easily docket all relevant deadlines of the transferred trademark filings.

A transferred trademark application or registration should not be regarded in the same way as a transferred patent, which does not impose an obligation on the patent owner to use the patent. Trademark owners have an ongoing obligation to use the transferred trademark on the pertinent goods or services identified in the trademark filings. Ceasing the use of the marks on the relevant goods or services could jeopardize rights in the transferred marks.

What if the owner is the same, but the company has changed its name?

If the trademark owner is the same entity with a different name, the trademark owner should record a name change with the USPTO. An assignment cover sheet should be added to a copy of the corporate documents reflecting the name change, which will all be submitted to the USPTO. Be careful not to think of a different entity as merely a name change. For example, if your old company was an LLC and you formed a new corporation, those are two different entities. A trademark assignment would be required to transfer trademarks from the LLC to the new corporation.

Need to transfer a trademark application or registration?

An  experienced trademark attorney  can help you properly transfer a trademark filing. Email me at  [email protected]  or  call (949) 223-9623  to get started on transferring ownership of a trademark.

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Navigating the world of trademarks is a crucial aspect of protecting your business's brand and identity. When you own a trademark , you have exclusive rights to a particular name, logo, or symbol that distinguishes your goods or services from others. However, there may come a time when you need to transfer these rights to another entity, a process known as a trademark assignment . This article will guide you through the intricacies of assigning a trademark, from understanding its importance to the steps involved, the legal aspects, and the role of professional assistance in ensuring a smooth transition.

How to Assign a Trademark

trademark assignment filing

Trademark Assignment: Definition and Significance

At its core, a trademark assignment is a legal act of transferring ownership rights of a trademark from one party, the assignor, to another, the assignee. In this process, the assignor relinquishes all rights, titles, and interest in the trademark, effectively handing them over to the assignee.

The importance of trademark assignment cannot be overstated. It provides businesses with financial flexibility and opportunities. For instance, if a company no longer wishes to use their registered trademark, they can monetize it by selling or assigning it to another business that finds it valuable, thereby leveraging the brand equity built over time.

For the buyer, acquiring an established trademark can accelerate brand recognition and customer trust, facilitating a quicker market presence. This approach is often adopted during mergers and acquisitions to fortify the brand's strength and provide a comprehensive range of services under a single, unified trademark. This strategy is particularly prevalent in sectors where brand reputation significantly influences customer choice.

Furthermore, trademark assignment encourages the efficient use of intellectual property. It enables trademarks to be exploited by those who recognize their maximum potential and are willing to invest resources to boost their market visibility and reputation. Therefore, trademark assignment plays a pivotal role in the dynamic growth and development of businesses.

Understanding the Trademark Assignment Process

Transferring a trademark from one owner to another, known as trademark assignment, is a process that requires careful attention to detail. This process is designed to establish a clear line of ownership, helping to prevent potential legal disputes down the line.

At the outset, it's vital to clearly identify both the assignor (the original owner of the trademark) and the assignee (the new owner). This includes providing specific details such as the names of the parties involved and their respective addresses, which helps to avoid any potential confusion.

Equally important is the accurate definition of the trademark being assigned. This involves detailing the trademark's name or logo, registration number, date of registration, and the specific goods or services it represents. Any inaccuracies in this information could lead to the assignment being invalidated at a later date.

The next step is to outline the terms and conditions of the trademark assignment agreement. This legal document outlines the rights and responsibilities of both parties, including the scope of the assignment and whether it includes goodwill. It's crucial that this agreement is carefully drafted to ensure all parties are on the same page.

After the agreement has been drafted, it must be signed by both the assignor and assignee, preferably in the presence of a notary. The final step is to file the trademark assignment with the appropriate Intellectual Property Office, which makes the assignment official and part of the public record.

While the process may seem straightforward, it's important to remember that any mistakes or inaccuracies can lead to the assignment being invalidated. Therefore, it's crucial to approach the process with a high level of professionalism and attention to detail.

Preparing and Submitting a Trademark Assignment

Preparation and submission are key stages in the trademark assignment process. Any missteps during these stages could result in the assignment being invalidated, potentially leading to legal issues down the line.

The preparation stage involves drafting a detailed trademark assignment agreement. This document outlines the terms of the transfer, including the rights and responsibilities of each party and the scope of the assignment. It should also specify whether the assignment includes goodwill.

When drafting the agreement, it's crucial to provide a thorough description of the trademark being assigned. This includes the trademark's registration details, such as its number and date, as well as the goods or services it represents. Providing this level of detail helps to ensure clarity and prevent potential disputes in the future.

Once the agreement has been drafted and signed by all parties, it's time to submit it to the appropriate Intellectual Property Office. This office needs to be informed of the change in ownership in order to officially recognize the assignment. This involves submitting the agreement, an application for registration of title under the new owner, and the required fees.

The process of getting a trademark assignment recognized can take several weeks or even months, depending on the workload of the office and the complexity of the application. It's important to be patient, keep up with any necessary follow-ups, and ensure the office has all the information it needs to process the assignment efficiently.

Understanding the Legalities of Transferring a Trademark

Transferring a trademark is not just a simple transaction. It involves several legal intricacies that uphold the integrity of intellectual property rights. Grasping these legalities is crucial to avoid missteps that could lead to severe repercussions.

The agreement that facilitates the transfer of a trademark from the original owner to the new one is a legally binding document. It's of utmost importance that this agreement is drafted meticulously and accurately. Any errors in the document can render the transfer invalid or spark legal disputes. Furthermore, any deliberate or accidental provision of false information can lead to serious legal consequences, including potential fraud charges.

Understanding the terms of the agreement is another critical legal aspect. Misinterpretation or misunderstanding of these terms can lead to breaches and subsequent disputes after the transfer. For example, if the agreement specifies that the new owner cannot license the trademark to others without the original owner's consent, any attempt to do so would be a breach of the agreement, which could lead to legal repercussions.

It's a legal obligation to file the trademark transfer with the relevant Intellectual Property Office. If this step is skipped, the transfer will not be officially recorded or acknowledged, leaving it susceptible to challenges. This could also impact the new owner's right to use the trademark and take legal action in case of infringement.

The legal complexities involved in transferring a trademark require a thorough understanding of intellectual property law. It's highly advisable to seek legal help to ensure the process is executed correctly and in compliance with all legal requirements.

Post-Transfer Responsibilities

After a trademark has been successfully transferred, the new owner has several important responsibilities to ensure the trademark's continued protection and validity.

A crucial initial step is to maintain the trademark's protection. This includes using the trademark regularly in business operations and renewing it on time. Failure to do so could result in the trademark being cancelled for non-use or expiring due to missed renewal deadlines.

Another key responsibility is to guard against potential infringements. The new owner must actively monitor the market to prevent unauthorized use of the trademark. This could involve using watching services that alert the owner of potential infringements or conducting regular market audits.

If an infringement is detected, the new owner must be ready to take legal action immediately. This emphasizes the importance of keeping detailed records of the trademark transfer, which can serve as proof of ownership in potential disputes.

Lastly, the new owner must comply with the obligations outlined in the trademark transfer agreement. This could include adhering to certain quality standards or avoiding transfer to specific parties.

Post-transfer responsibilities are vital to maintaining the trademark's integrity and value. The new owner must be dedicated to preserving the trademark's strength, relevance, and legal protection, ensuring it continues to fulfill its role in its respective market.

Understanding the Intricacies of Trademark Assignment Agreements and Common Filing Errors

When transferring ownership of a trademark, a trademark assignment agreement serves as the cornerstone. This contract delineates the responsibilities and rights of both the assignor, who is the original owner of the trademark, and the assignee, the new owner. A well-drafted agreement can help avert potential conflicts by ensuring all parties are on the same page regarding their roles and obligations.

Key components of a standard trademark assignment agreement include a comprehensive description of the trademark, clarity on the scope of the assignment, accurate identification of the parties involved, pertinent dates, warranties, and a clear indication of whether the assignment includes the goodwill associated with the trademark.

Despite the importance of these agreements, errors in their preparation and filing are not uncommon. These mistakes often stem from a lack of understanding or awareness of trademark law. Misidentifying the parties involved, leaving out essential clauses, misunderstanding the scope of the assignment, and neglecting to record the assignment with the appropriate intellectual property office are some of the most common errors. These oversights can lead to disputes over the assignment, infringement on the rights of the parties involved, or even the nullification of the assignment.

For example, if the assignor is inaccurately identified in the agreement, it can lead to confusion and potential conflicts if the assignor later disputes the sale of the trademark. Similarly, if the assignment excludes the transfer of goodwill, but the assignee uses the trademark in a way that suggests a connection with the assignor's goodwill, this could result in liability for trademark infringement or passing off.

To circumvent these potential issues, it's highly recommended to seek professional legal advice when drafting and filing trademark assignment agreements. This ensures the information is accurate and complete, the execution is valid, and any legal complications arising from filing errors are avoided.

Understanding the Legal Ramifications of Incorrect Trademark Assignment and Misinterpretation of Agreement Terms

Incorrect execution of a trademark assignment or misunderstanding the terms of the agreement can lead to serious legal consequences. This is because a trademark assignment represents the transfer of a valuable property right that carries with it several legal obligations.

Incorrect assignments typically involve errors in the trademark assignment agreement or filing process. These can include mistakes in identifying the parties or the trademark, omitting essential clauses, and failing to register the assignment with the appropriate Intellectual Property Office. Such errors can result in a range of legal problems, including the nullification of the assignment, legal liability, and potential litigation.

For example, if the assignment does not properly transfer the goodwill associated with the trademark, it may lead to its nullification. This usually happens if the assignment agreement is deemed a bare or naked assignment, resulting in the assignee losing their rights.

Misinterpretation of the agreement terms can also have legal consequences. If a clause restricts the use or sublicensing of the trademark without the assignor's consent, and the assignee ignores this term, it may lead to a breach of contract. This could result in legal actions, including claims for damages, injunctions, or even termination of the agreement.

Given these potential legal ramifications, it's crucial to ensure the proper execution and understanding of a trademark assignment. Both assignors and assignees are strongly encouraged to involve legal professionals specializing in intellectual property law to guarantee a legally sound and smooth process.

Why Professional Assistance is Crucial in Trademark Assignment

Assigning a trademark is a multi-step process, laden with potential legal intricacies and challenges. This is where the importance of professional assistance comes into play. It ensures a smooth assignment process and protects the rights associated with the trademark.

Trademark attorneys, with their deep understanding of intellectual property laws, industry norms, and contractual agreements, are particularly beneficial. They help craft a comprehensive trademark assignment agreement, covering all necessary elements and protecting the interests of all parties. They also help avoid common filing errors, such as incorrect identification of parties or trademarks, inaccurate details, and missing essential clauses.

The role of professional assistance extends beyond the initial preparation and filing of the trademark assignment. They guide the assignee through post-assignment procedures, help maintain the trademark's protection, monitor the market for potential infringements, and ensure compliance with any obligations outlined in the assignment agreement.

In the event of disputes, having a legal professional by your side can expedite resolution and potentially save you from a drawn-out legal battle. They can guide you through the legal maze, suggest appropriate actions, and even represent you in court if necessary.

Furthermore, intellectual property laws are dynamic, changing in response to technological advancements, market trends, and legal interpretations. Professional assistance can help you stay ahead of these changes, ensuring your trademark assignment remains legally robust over time.

The Advantages of Hiring a Trademark Attorney and How to Choose One

Employing a trademark attorney during the assignment process comes with numerous benefits. These professionals, with their specialized knowledge of trademark law, ensure the assignment agreement is legally robust and free from errors. They can spot potential issues, suggest solutions, and ensure legal and procedural compliance.

Trademark attorneys assist in creating and reviewing the assignment agreement, making sure it's thorough and protects the rights of both the assignor and assignee. They also guide you through the official filing process, ensuring all documents are correctly prepared, filed on time, and properly recorded with the intellectual property office.

After the assignment, a trademark attorney can monitor the use of the trademark and watch for potential infringements, thereby preserving the trademark's integrity. If disputes arise, having an experienced professional on your side can lead to quicker and more favorable outcomes.

However, these benefits depend on choosing the right attorney. The chosen professional should have a strong background in intellectual property law, preferably with a focus on trademarks. They should have a history of successful assignments, showing their ability to handle the process's complexities. Responsiveness and commitment to the client are also important. Moreover, the attorney should maintain high ethical standards, handling sensitive matters like legal documents and transfer of proprietary rights with utmost integrity.

Choosing the right trademark attorney can simplify the assignment process, preserve the trademark's value, and protect it from potential legal issues. They not only facilitate the transaction but also ensure its long-term success and effectiveness.

1. What are the key steps to assigning a trademark?

The assignment of a trademark involves several important steps: it begins with the owner deciding to transfer the rights, drafting an assignment agreement, confirming the assignee's willingness, filing the paperwork with the U.S. Patent and Trademark Office (USPTO), and finally paying the requisite fees.

2. Can a trademark be assigned along with the associated goodwill of the business?

Yes, trademarks can be assigned along with the goodwill of the business. In fact, as per the law, trademarks typically should be assigned with the related goodwill, which encompasses a business' positive reputation and customer relations.

3. Is it necessary to record an assignment of trademark with USPTO?

Yes, recording the assignment with the USPTO is crucial. This recordal ensures the public notice of the assignment and helps in establishing a legal chain of title for the trademark.

4. Are there any filing fees for recording the assignment of a trademark?

Yes, accrue some fees when filing the trademark assignment with the USPTO. As of now, the fee is $40 per international class for electronic filing.

5. What are the consequences of failing to record a trademark assignment?

Failure to record a trademark assignment may lead to legal disputes about the ownership of the trademark. Moreover, the subsequent assignee may have defective title if the assignment is not recorded with the USPTO.

6. Can a trademark be partially assigned to another party?

Yes, a trademark can be partially assigned. For example, the rights may be transferred for specific products or services, or for use in specific geographical areas, while the original owner retains the rest of the rights.

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This latest update builds on previous guidance by providing further clarity and consistency to how the USPTO and applicants should evaluate subject matter eligibility of claims in patent applications and patents involving inventions related to AI technology. 

The Strategy aims to grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship, and innovation among youth and those from historically underrepresented and underresourced communities.

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Foreword Oct2012 Apr2013 Oct2013 Apr2014 Oct2014 Jan2015 July2015 Oct2015 Apr2016 Oct2016 Jan2017 Apr2017 Oct2017 Oct2018 July2021 July2022 Nov2023 May2024 (Current)

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)

trademark assignment filing

Commissioner for Trademarks

Attention: Editor, Trademark Manual of Examining Procedure

P.O. Box 1451

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

Trademark Basics Boot Camp, Module 1: Fundamentals

Are you a small business owner or entrepreneur interested in learning about trademarks and how to apply for a federal registration? If so, this event is a must-attend. In this first module of our eight-part virtual Trademark Basics Boot Camp, we’ll focus on trademark protection in the United States. The event is free, but space is limited, so register early .

This module will cover the following topics:

  • Definitions and types of trademarks
  • Benefits of federal registration
  • Selecting a trademark
  • Filing and registration
  • Finding help 

This module will be presented live via Webex from 2-3:30 p.m. ET on Tuesday, October 1, 2024, and will conclude with a question-and-answer session. Please register by September 30. 

Register today

Be sure to check out our  other boot camp modules  running consecutively every week for the eight-week duration. You can attend the whole series or just the specific modules that best meet your needs. Separate registration is required for each module. After each event, we'll email registrants links to a video recording of the module and a PDF of the presentation materials. You will only receive access to the recording if you are signed up for that module.

For questions about the event or the boot camp series, please contact [email protected] .

Accessibility accommodation

If you are an individual with a disability and would like to request a reasonable accommodation, please submit your request to the contact information listed above.

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IMAGES

  1. Trademark Filing Basis: Things to know

    trademark assignment filing

  2. Transfer of Trademark Rights through Trademark Assignment

    trademark assignment filing

  3. Trademark Filing Essentials: Must Follow

    trademark assignment filing

  4. FREE 14+ Trademark Assignment Forms in PDF

    trademark assignment filing

  5. Trademark Filing Requirements: Overview Guide

    trademark assignment filing

  6. FREE 7+ Sample Trademark Assignment Forms in PDF

    trademark assignment filing

VIDEO

  1. Macao Trademark Assignment: Comprehensive Analysis

  2. Assignment of trademark #shorts40 By CS NKJ Sir #drafting #cs #csnkjcsclass #csprofessionalsyllabus

  3. Filling Out Trademark Application Form Correctly To Avoid Common Mistakes in TM-1 and IPO Objections

  4. Transferring a Trademark in the US: Step-by-Step Guide (Avoid These Mistakes!)

  5. What is a Trademark Assignment

  6. Trademark Assignment

COMMENTS

  1. Trademark assignments: Transferring ownership or changing your name

    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 ...

  2. Assignment Center

    The U.S. Patent and Trademark Office (USPTO) is streamlining the process for recording assignments and other documents relating to interests in patents and trademarks. Our new system will guide you through the steps of making a submission, provide easier editing capabilities, and allow you to see the progression and status of your submission.

  3. Transferring ownership/ Assignments FAQs

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382. Show all FAQs. Browse FAQs.

  4. Assignment Center

    Assignment Center is the USPTO's online system for filing and managing patent and trademark assignments. Learn how to use it with our tutorial videos and FAQs.

  5. Index of all TEAS forms

    Registration Maintenance/Renewal Forms. Combined declaration of use & incontestability under Sections 8 & 15. Declaration of Use and/or Excusable Nonuse of a Mark under Section 8. Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9.

  6. USPTO Trademark Assignment: Everything You Need To Know

    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 ...

  7. Assignment Center

    You may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 a.m. to 5 p.m. ET. You may email questions about electronic assignment filing to [email protected].

  8. Assignment Center

    What you need to know, before filing (PDF) Sample of a Patent Assignment (PDF) Sample of a Trademark Assignment (PDF) Resources. Upload a Document (PDF) Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent Examining Procedure (MPEP) Trademark Manual of Examining Procedures (TMEP) Assignment Search ; Tutorial

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

    A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a "transfer of goodwill" - this is written fully as a transfer of " (1) all the property, right, title and interest in and to the Trademark including all common ...

  10. Trademark Center

    Check filing status; Search assignment; Record assignment; Order certified Patent documents; Patent Trial and Appeal Case Tracking System; Manual of Patent Examining Procedure; Trademarks . Search trademarks; File trademark forms; View status, documents, and registration certificates; ... Search the trademark database.

  11. PDF Using Assignment Center for Trademarks

    11. Sign in to your USPTO account using your email address and password. After you successfully log in, you'll see the Assignment Center dashboard shown below. 12. Click the "Create new" button to open the "Assignment applications options" page. 13. Click "Start a new trademark assignment" and proceed to the next page.

  12. United States Patent and Trademark Office

    A person or entity to whom the registration has issued. A resident of the United States to whom service of process may be sent regarding the trademark. The database contains all recorded Trademark Assignment information from 1955 to the present. Trademark Assignments recorded prior to 1955 are maintained at the National Archives and Records ...

  13. How to Transfer Trademark Ownership: Trademark Assignment

    To transfer ownership of a single trademark application or registration, our cost is $790, including our $750 flat rate and $40 USPTO fee. Our firm charges flat fees for trademark assignments and patent filings. The USPTO recording fee is $40 for the first mark, and $25 for each subsequent marks. For multiple marks, we can draft a single ...

  14. How to Assign a Trademark

    The assignment of a trademark involves several important steps: it begins with the owner deciding to transfer the rights, drafting an assignment agreement, confirming the assignee's willingness, filing the paperwork with the U.S. Patent and Trademark Office (USPTO), and finally paying the requisite fees. 2.

  15. United States Patent and Trademark Office

    The Strategy aims to grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship, and innovation among youth and those from historically underrepresented and underresourced communities. Home page of the United States Patent and Trademark Office's main web site.

  16. USPTO modernizes patent, trademark assignment request process

    The collection of assignment information is required by 15 U.S.C. § 1057 and 1060 and is used by the public to submit (and by the USPTO to process) patent and trademark assignment recordation requests using the EPAS and ETAS. For more information, contact the Assignments Recordation Branch customer service personnel at [email protected] or (571 ...

  17. Trademark Manual of Examining Procedure (Tmep)

    Trademark Examining Attorneys will be governed by the applicable statutes, the Trademark Rules of Practice, decisions, and Orders and Notices issued by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Commissioners, or Deputy Commissioners. ...

  18. PDF Assignment Center Training Guide Trademarks

    Determine the supporting documents required to submit with your application. Documents must be either PDF or TIFF files, and the file size must be no larger than 10 MB. You must upload at least one document. Click "browse files" to locate documents you want to upload from your device.

  19. USPTO Assignments on the Web

    Registration Number: Assignor Name: Assignor Index: Assignee Name: ... Registrant Name: Registrant Index: The database contains all recorded Trademark Assignment information from 1955 to August 30, 2024 . ... If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6 ...

  20. USPTO fee schedule

    International fee for recording of an assignment of an international registration: 7954: n/a: 7.6(a)(1)(i)-(ii) Certifying an international application based on a single basic application or registration, per class: $100.00 ... Recording trademark assignment, agreement or other ownership document, second and subsequent marks in the same ...

  21. PDF Assignment of Trademark

    ereby agree as follows:Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill of the ...

  22. Assignment Recordation Branch (ARB)

    Assignment Recordation Branch (ARB) Local. 571-272-3350. [email protected]. Helps customers with transferring ownership or changing the name on their patent or trademark registration using Assignment Center. Also provides information relating to pending patent or trademark assignments, and answers questions about assignments, liens on ...

  23. Trademark Basics Boot Camp, Module 1: Fundamentals

    Add to Calendar2024-10-01 14:00:002024-10-01 14:00:00Trademark Basics Boot Camp, Module 1: Fundamentals Are you a small business owner or entrepreneur interested in learning about trademarks and how to apply for a federal registration? If so, this event is a must-attend. In this first module of our eight-part virtual Trademark Basics Boot Camp, we'll focus on trademark protection in the ...