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TRADEMARK ASSIGNMENT & TRANSFER FEES CALCULATOR
A trademark assignment is a process where ownership of and rights to a trademark are transferred to another person.
You can only assign (transfer) a registered trademark by executing an agreement called the Trademark Assignment Agreement and then registering that assignment with the Trademarks Office.
Use the calculator below to get an idea of how much you'll pay in government fees to assign your registered trademark to someone else.
1 WHERE DO YOU WANT TO ASSIGN YOUR TRADEMARK?
Calculate fees to assign and transfer trademark(s) registered in:
2 HOW MANY TRADEMARKS DO YOU WANT TO ASSIGN?
3 show results in which currency, so how much does it cost to assign a trademark.
Whether you're transferring yourademark from you personally as an individual to a company you own (or the other way around) or whether it's a transfer between unrelated entities, you need to register it with the same Trademarks Office where the trademark is registered.
This will ensure that the new owner is shown on the website and in all official documents of the Trademarks Office.
The fee for the transfer is nominal at $40 for the first trademark being assigned, with $25 for each additional trademark.
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Trademark Ownership Change
We help you transfer ownership of a trademark., what is trademark assignment.
A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner. To record an assignment or name change, the trademark owner must file a Recordation Form Cover Sheet along with a copy of the actual assignment. A name change does not require that the filer submit proof of name change.
Anytime a trademark changes ownership, you should record an assignment agreement. For example, an assignment should be recorded if you sell your trademark, if you gift your trademark to someone else, or if your corporate structure changes such that a new entity ends up owning the trademark rights.
What are the requirements for Trademark Assignment (Ownership Transfer)?
- The government charges a fee of $40 to process a trademark assignment.
- Complete the trademark ownership transfer workflow on www.trademarkelite.com.
$299.00 /application + govt fee.
- Experienced Attorney will record your trademark ownership transfer
- Professional Trademark Assignment for $299.00/application + govt fee
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Ryan helped me trademark the name and logo for my dental practice. He clearly explained the entire process, and I'm happy to say both of my marks are registered! I will definitely be using Trademark Elite in the future.
I've used other filing services in the past, but Trademark Elite's service is worlds apart. A real attorney - not a customer service representative - guided me through the entire process, and I didn't feel like a "just a number."
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I was very much impressed by the professional shrewdness and prompt actions of Ryan Bethell. Frankly, he is a direct, no-nonsense trademark specialist that I recommend to any business without any hesitation.
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I dealt with Ryan and he was very competent and helpful. He always replied to my questions and gave good advice. I recommend Ryan at Trademark Elite.
Trademark Assignment/Ownership Transfer FAQs
Still have questions? Call 1-833-863-5483 or Contact Us for real-time support.
What is a trademark assignment?
A Trademark assignment is a document that is recorded with the USPTO to memorialize the transfer of ownership of a trademark registration to a new owner.
When do I need to file a trademark assignment?
Do i need to record an assignment if i sell my company.
Sometimes. If a company is the owner of the trademark and the company is sold, the rights provided by a Trademark Registration pass with company to a new owner by default.
If you are intending to sell a company and retain the trademark rights, either under your own name or a new company, then you should record a Trademark Assignment before the company is sold.
How much does a Trademark Assignment cost?
The government charges a fee of $100 - $200 to process a trademark assignment. If you use an attorney to file, the professional fees to prepare and file your statement of use will vary significantly based on the attorney's hourly rate.
We charge a fee of $299 per application for preparing and filing each Trademark Assignment.
Register your name, slogan, or logo trademark today.
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Fees and payment
Access current fee amounts, all USPTO systems to file and pay online, and links to additional fee and payment information.
List of patent fees (current fee schedule)
List of trademark fees (current fee schedule)
Pay online (preferred method)
Select the USPTO system from the table below corresponding to the type of payment you wish to make. We accept credit cards, debit cards that do not require a PIN, deposit accounts, or EFT when paying online. Guest users can only pay with a credit or debit card, but signed in USPTO.gov account users can pay with any payment method stored in Financial Manager .
If your deadline is today and the system is unavailable, refer to the alternative payment instructions in the Pay by fax or mail section below.
Pay by fax or mail
The fax number depends on the type of payment you wish to make. We accept credit and debit card, or deposit account when paying by fax. For credit and debit card payments, include the Credit Card Payment Form .
- Frequently requested fax numbers appear in the table below. For a comprehensive listing of fax numbers, refer to the Contact us page.
The mailing address depends on the type of payment you wish to make. We accept check or money order, credit and debit card, or deposit account when paying by mail. For credit and debit card payments, include the Credit Card Payment Form .
- For a listing of current mailing addresses, refer to the Mailing and hand carry addresses page.
If our systems are unavailable, see Filing Patent documents during an outage or Filing PTAB documents during an outage for alternative methods to file and pay fees.
Trademark fees must generally be paid using the Trademark Electronic Application System (TEAS) and are not accepted by fax or regular mail except in certain circumstances, such as a system outage.
If our systems are unavailable, see Filing Trademark documents during an outage or Filing TTAB documents during an outage for alternative methods to file and pay fees.
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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 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.
While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.
If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.
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Content Approved by UpCounsel
- Trademark Assignment Recordation
- Trademark Transfer: Everything You Need To Know
- How Long Does a Trademark Last
- Trademark Law
- Selling Trademarks
- Trademark Checklist
- Are All Trademarks and Names Legally Protected
- Available Trademarks
- What does Trademark Mean
- Purpose of Trademark
Carl Oppedahl's blog
Why it costs money to record a trademark assignment at USPTO?
Used to be you had to pay a $40 fee to record an assignment at the USPTO. Adding a second property to the recordation cost $40 if you were recording a patent assignment but cost $25 if you were recording a trademark assignment.
I never understood why that second or third property cost one price for trademarks and a different price for patents.
Almost two years ago the USPTO cut the fee for recording a patent assignment to zero. This was welcome news. When that price cut happened, I recall wondering why this fee did not drop to zero for trademark assignments.
Today I got my chance. I am the vice-chair of AIPLA’s Patent Cooperation Treaty Issues committee, so I was present at a meeting of committee chairs, vice-chairs, and board members. Mary Boney Denison, the Commissioner for Trademarks, was a special guest. When she finished her prepared remarks, she asked if anybody had any questions. So I raised my hand and asked why it is that we have to pay money to record a trademark assignment when we don’t need to pay money to record a patent assignment.
The Commissioner looked at me. I got the impression that she may have gotten this question before. Her response was that the patent office did not check with the trademark office before announcing this price cut. And that the trademark office has no interest in reducing this fee to zero.
Now in fairness to the situation, the consequences on the world of IP of a nonzero fee for recording an assignment are different for patents than for trademarks. Most patents (nearly all of the patents handled by my firm) have an assignment recorded. In contrast, most trademark registrations go through their entire life without an assignment being recorded. Said differently, when the USPTO cut the price for recording a patent assignment to zero, this made a difference for hundreds of thousands of patent applications and patents per year. In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners (whose trademarks generally only rarely change hands).
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3 Replies to “Why it costs money to record a trademark assignment at USPTO?”
But Carl, that actually argues for cutting the trademark assignment fees. The Patent division gave up hundreds of thousands of dollars in revenues by eliminating patent recordation fees. The TM division would give up much less revenue than that, because so few assignments are recorded. So that’s another reason why TM assignment recordation should be free.
“In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners”. And in what way is this relevant to a fee being charged for trademark assignments and not for patent assignments? As it is, the patent side of the PTO gave up a significant income stream, but what you’re saying is that the TM side would not have to. So why do they keep on charging the fee? – from the article, it sounds as if “we can charge it, so we do”.
It seems counter-intuitive. Drop the patent assignment fee to $0 and the PTO loses a lot of money. Drop the trademark assignment fee to zero and the PTO loses very little money. If you had to chose, drop the trademark fee which results in a far smaller lose of revenue that dropping the patent assignment fee. ??
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Trademark assignment — How to guide by LegalZoom Staff
Trademark assignment — How to guide
What would you like to protect?
by LegalZoom Staff updated February 08, 2023 · 10 min read
A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including trademarks or software) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly-drafted trademark assignment can help in both circumstances.
A trademark assignment is the transfer of an owner’s property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.
If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations and you will be well on your way to establishing a clear record of title for all of your trademarks.
2. Dos & don’ts checklist
- A trademark protects names, terms, or symbols used to identify the products of a certain manufacturer or company. This includes brand names like “Coca-Cola” and images like Nike’s famous “swoosh.” A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.
- An assignment is different than a license, which is a grant of permission to use a trademark in some restricted way (e.g., a limited time, specific purpose, particular area, etc.). A transfer of partial rights is not a trademark assignment: do not revise the agreement to limit the reach of the rights being provided.
- A trademark transfer is typically accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made.
- The advantage of selling your trademark outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property: you will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a trademark, make sure that this is the best (and most lucrative) approach for you and your company.
- Do not enter into an agreement without completing your due diligence. If you are purchasing a trademark, conduct searches with the USPTO, all 50 states, DBA filings, other government agencies, and online directories to make sure the seller actually has complete and unique rights in the offered property. Although your findings will not guarantee title, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the valuation and breadth of the mark. Consider hiring a professional to help in your investigation: comparing trademarks often requires a specialized understanding of what marks will be considered confusingly similar or deceptive.
- If you are selling a trademark, make sure you own it. Although this may seem obvious, ownership of intellectual property is rarely clear cut. For example, you may have a name that you think of as your trademark, but unless you have used it in business you do not have rights in that mark. Even if you have been using a mark in your business, another company may have started using it before you and have priority rights in that mark. A thorough search of the relevant marketplace and registry office should be conducted before you attempt to sell your trademark.
- Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly on the document.
- Sign two copies of the assignment, one for you and one for the other party.
- It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
- If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs.
3. Trademark assignment instructions
The following provision-by-provision instructions will help you understand the terms of your assignment. The numbers and letters below (e.g., Section 1, Section 2, etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process.
- Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest, and the Assignee is the party receiving it.
- Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the trademark.
- Section 1: Assignment of marks. The assignment and acceptance of the assignment of the trademarks and service marks. Note that the marks being assigned are not described in the agreement itself. The assignment references “Schedule 1,” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred. Note too the emphasis placed on the goodwill being sold with the property. Goodwill can be defined as the intangible value of a piece of property (e.g., a brand’s reputation and recognizability). Remember that this is an essential element of a trademark transfer: assignments attempted without goodwill are considered invalid.
- Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
- 3(a): it is the owner
- 3(b): it has not sold or transferred the marks to any third party.
- 3(c): it has the authority to enter the agreement.
- 3(d): it does not believe that the marks have been taken from any third party without authorization (e.g., a knowing copy of another company’s trademark).
- 3(e): it does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
- 3(f): the marks weren’t created while the creator was employed by a third party. In many cases, if an individual was employed by a company and came up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the marks being sold. If you and the other party want to include additional representations and warranties, you can do so here.
- 4(a): has the authority to enter the agreement.
- 4(b) has enough funds to pay for the assignment.
- If you and the other party want to include additional representations and warranties, you can do so here.
- Section 5: No early assignment. Prevents the Assignee from re-transferring the marks, or using them as collateral for loans, until it has made complete payment of the money due under the agreement.
- Section 6: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
- Section 7: No further use of marks. Indicates that after the effective date of the agreement, the Assignor will stop using all of the trademarks being transferred and will not challenge the Assignee’s use of those marks.
- Section 8: Indemnification. A description of each party’s future obligations, if the trademark is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
- Section 9: Successors and assigns. States that the parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
- Section 10: No implied waiver. Explains that even if one party allows the other to ignore break an obligation under the agreement, it does not mean that party waives any future rights to require the other to fulfill those (or any other) obligations.
- Section 11: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write in a mailing address for both the Assignor and the Assignee.
- Section 12: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
- Section 13: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city - much less the same room - this provision ensures that business can be transacted efficiently, without sacrificing the validity of the agreement as a whole.
- Section 14: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with choice of law would be invalidated, leaving the remainder of the assignment enforceable.
- Section 15: Entire agreement. The parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
- Section 16: Headings. Notes that the headings at the beginning of each section are meant to organize the document, and should not be considered operational parts of the note.
- Schedule 1: List of trademarks and/or service marks. In order for a trademark assignment to be effective, the marks being transferred must be clearly identified. Be thorough in your description and attach any registrations or samples that you may have. If you do include samples, reference the inclusion of those samples in the schedule (e.g., “* See attached drawing”).
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Home » Trademark Assignment
A trademark assignment transfers all rights in a trademark to another party. Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.
When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.
What is a Trademark Assignment?
A trademark assignment transfer all rights, title and interest in a trademark to the recipient. Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.
If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.
Trademark Assignment Agreement
When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement. A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.
The following qualifications should be met at a minimum:
- All involved parties – the assignor and assignee – should be identified.
- The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
- Consideration must be listed (i.e. what each party is receiving).
- List the effective date of the transfer.
- Contract must be duly executed.
- Trademark goodwill must be specifically transfered.
These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.
Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public. It is an intangible asset that is linked to the consumer recognition of a brand.
Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.
Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.
Reasons for Trademark Assignments
Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:
- Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
- Sale of business : A trademark owner may decide to focus on a different business or retire.
- Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.
There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.
Before Taking Ownership
Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:
- Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
- Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
- Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
- Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
- Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
- Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.
The moral here is to always perform due diligence before taking ownership of another party’s trademark.
Trademark Assignment with the USPTO
To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .
When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.
Nunc Pro Tunc Trademark Assignment
Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.
This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution. Documenting assignments after the fact is definitely not a best practice and can lead to many issues. It is however the only way to try to fix an error that has occurred in the past.
Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.
The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.
The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive. An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue. A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor. A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.
Licensing agreements should always be in writing and preferably they should be notarized. Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.
The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.
If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.
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The following are the trademark fees charged by the United States Patent and Trademark Office. Patent Fees are listed separately.
Note that most PTO fees are "per class" - that is, if the goods or services fall under more than one class in the International Classification of Goods and Services, then you must pay a separate fee for each class of goods. For example, if you are selling mugs (Glassware, Class 21) and t-shirts (Clothing, Class 25), you'd need to pay double the filing fees for a single class application. On the other hand, mugs, glasses and plates would fall into just class 21, so filing for these goods would only incur one filing fee. For a list of acceptable goods and services descriptions, with classes, see the " Trademark Identification Manual " on the USPTO website.
For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO's General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. A complete copy of the USPTO's fee schedule is also available from their website
Most trademark fees increased, effective January 14, 2017 . Also, additional fees for filing on paper are imposed for most filings.
Note: these fees are correct as of January 2, 2021. As USPTO fees are subject to change, be sure to check for the latest fees before filing anything.
The preceding information was retrieved from the USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees.
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Assignment of Trademark
- Mohit Gulati
- | Corporate Law - Articles
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- 20 Jul 2020
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As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.
Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.
Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;
WHO CAN ASSIGN A TRADEMARK:
As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.
ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-
As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.
Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.
TYPES OF ASSIGNMENT:-
1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.
For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.
In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.
2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.
For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.
In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.
RESTRICTION ON ASSIGNMENT OF TRADEMARK:-
1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)
2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)
PROCEDURE FOR ASSIGNMENT OF TRADEMARK:
REGISTRATION OF ASSIGNMENT OF TRADEMARK:
1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)
2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)
3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)
4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )
5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)
6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)
7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-
a) the name and address of the assignee;
b) the date of assignment;
c) where the assignment is in respect of any right in the trademark, a description of the right assigned;
d) the basis under which the assignment is made; and
e) the date on which the entry is made in the register.
RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:
The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.
In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:
“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.
RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:
Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.
The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.
In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:
“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”
The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.
IMPORTANT KEY POINTS
√ Assignment is to be in writing;
√ Registered or unregistered both type of marks can be assigned;
√ Assignment can be with or without the goodwill of the business;
√ Event of assignment asserts the rights and title in an assignee not the registration thereof;
√ Registration of assignment is only prima facie proof of title of trademark;
√ Rights in an assignee exists even before registration of assignment of trademark.
Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.
Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.
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How to transfer trademark ownership (trademark assignment)
- Trademark Registration
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 .
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.
Was this post on how to transfer trademark ownership helpful?
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1. Filing Declaration of Use after 5 Years (§8 declaration): $225 per class (if filed before the grace period); 2. Filing Declaration of Use after 5 years (§8 declaration) combined with Declaration of Incontestability (§15 declaration): $425 per class (if filed before the grace period); 3.
There are fees associated with assignment changes. Locate the Trademark Services Fee Code "8521" on the current fee schedule to find the fee. To correct minor errors, see correcting the owner name in Trademark Electronic Application System (TEAS) forms. These corrections aren't considered assignments. Limitations based on filing basis
TEAS Standard - $350 per class of goods/services Applications based on Use in Commerce (Section 1 (a)) If there are no pitfalls during the prosecution of an application based on Section 1 (a), it will be published in the Official Gazette, then proceed directly to registration.
If you have two classes of goods, then you'll pay $700 ($350 plus $350). However, if you have multiple goods that belong in the same class, you'll only pay $350 because you're only filing for one class. Maintaining your registration After you register your trademark, you must file documents to maintain your registration at regular intervals.
The fee schedule provides information and fee rates for USPTO's products and services. All payments must be paid in U.S. dollars for the full amount of the fee required. View the Accepted payment methods page or call the USPTO Contact Center at 571-272-1000 or 800-786-9199 for assistance.
This will ensure that the new owner is shown on the website and in all official documents of the Trademarks Office. The fee for the transfer is nominal at $40 for the first trademark being assigned, with $25 for each additional trademark. NEED HELP PROTECTING YOUR BRAND?
The government charges a fee of $100 - $200 to process a trademark assignment. If you use an attorney to file, the professional fees to prepare and file your statement of use will vary significantly based on the attorney's hourly rate. We charge a fee of $299 per application for preparing and filing each Trademark Assignment.
List of trademark fees (current fee schedule) Pay online (preferred method) Select the USPTO system from the table below corresponding to the type of payment you wish to make. We accept credit cards, debit cards that do not require a PIN, deposit accounts, or EFT when paying online.
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.
Used to be you had to pay a $40 fee to record an assignment at the USPTO. Adding a second property to the recordation cost $40 if you were recording a patent assignment but cost $25 if you were recording a trademark assignment. I never understood why that second or third property cost one price for trademarks and a different price for patents.
Trade mark applications can be filed electronically via our E-filing System 24 hours a day from Monday to Sunday. Read more. Trade mark applications can also be sent to "Trade Marks Registry, Intellectual Property Department, 24/F, Wu Chung House, 213 Queen's Road East, Wanchai, Hong Kong" by post or in person during the business hours 9:00 a.m. - 5:45 p.m. (Monday to Friday).
A trademark assignment is the transfer of an owner's property rights in a given mark or marks. Such transfers may occur on their own or as parts of larger asset sales or purchases. Trademark assignment agreements both provide records of ownership and transfer and protect the rights of all parties.
To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation ...
4,500 Plus renewal fee applicable under entry 3. Application for renewal with surcharge/ restoration and renewal of a Trademarks under section 25 (3), 25 (4) for each class. 10,000 Plus renewal fee applicable under entry 3. 9,000 Plus renewal fee applicable under entry 3.
For assignment records, abstracts of title and certification per registration. $25.00. Recording trademark assignment, agreement or other ownership document, first mark per document. $40.00. Recording trademark assignment, agreement or other ownership document, second and subsequent marks in the same document. $25.00.
Trade mark forms and fees Updated 5 January 2022 1. Online trade mark forms 2. Trade mark applications 3. Trade mark renewal and restoration 4. Appointment or change: representative / owner 5....
After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.
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.
The Official fee to register a subsequent proprietor in case of trademark assignment for each trademark is INR 9000/- when the request for recordal of trademark assignment is filed online and INR 10000/- when the request is filed physically at the Trademark Office.
Trademark Filing Cost, Fees & Forms in India. ... For recording an assignment. 1. For a pending application - 500. 1,000. 900. 2. For Registered Marks within six from the date of assignment - 5000. 10,000. 9,000. For adding a person as a registered user. 5000 for first mark.