Trademark Assignment: Practical guide to Buying or Selling a Trademark

If you are learning about assigning a trademark now, then you must already have a basic understanding of what a trademark is. Inseparable from the concept of a trademark is the goodwill over the trademark in connection with the products and services with which it is being used.

Goodwill is, fundamentally, the reputation of a trademark that facilitates its function to distinguish it from others and to identify the source or origin of the products and services. Because of such goodwill, value is generated from the trademark. Anything valuable is an asset and the ownership of assets for that matter can be transferred from one person/entity to another. A trademark is a valuable intangible property and similar to physical properties, it can be bought or sold so that its ownership changes.

A trademark assignment (or trademark transfer) is both the process and the documentation of the change in the ownership of a trademark.

The trademark assignment document must be signed by the assignor or owner of the trademark in favor of the assignee or the new owner receiving the property rights over the trademark.

Thereafter, the trademark assignment must be recorded with the Trademarks Office to reflect the new ownership.

Moreover, recording the assignment establishes the chain of title over the trademark from one owner to another so the latest owner can exercise or avail themselves of the rights and remedies related to the trademark.

Assignment also allows the public to be informed of the new owner’s details.

Generally, whoever is listed as the trademark owner in the database or the records of the Trademarks Office, has all the legal rights in relation to the trademark, including the enforcement of the rights against infringement by third parties.

Trademark assignment forms and templates are usually readily available for trademark owners to use. Depending on the jurisdiction, the assignment form must either be at least signed by the assignor like in the US, Canada, UK, or signed by both the assignor and the assignee like in the EU. The parties may also draft their own assignment document. Whichever format is used; they must contain the following information:

  • The details and signatures of the parties – the assignor and the assignee. If the parties are companies, the name and title of the authorized officer executing the assignment on behalf of the companies;

  • Warranties or representations that the assignor has the right to transfer the trademark’s ownership in favor of the assignee;

  • The intent to transfer goodwill and rights over the trademark, and the consideration to receive the property;

  • The list and/or details of the trademark/s being assigned; and

  • Other additional stipulations that may have been agreed upon by the parties during negotiation such as indemnifications, waivers, and/or governing law, among others.

In the US, considering that use of the mark is required prior to registration, a registered trademark or a pending application based on use can easily be assigned. This is because a trademark that is already in use can be said to have already created goodwill which is required when the ownership of a trademark is being transferred. Note that it is not only rights but also goodwill that is being transferred in a trademark assignment.

As such, a trademark with a pending application based on intent-to-use (or future use) is generally not transferable before the mark has been in use. The USPTO may require the original or current applicant to first submit evidence of use of the mark by filing a Statement of Use or an Amendment to Allege Use before recording a trademark assignment.

In Canada, UK, EU and many other countries, there are no such limitations as use is not required prior to trademark registration.

Is a Change of Company Name the Same as a Trademark Assignment?

The trademark owner will only need to record a name change if the owner remains to be same entity. If the owner changes its name because its type of entity changed, e.g. LLC to corporation, then an assignment must be executed and then recorded with the Trademarks Office because they are two different entities with different legal personalities.

Is Licensing of a Trademark the Same as a Trademark Assignment?

Licensing a trademark enables the trademark owner to allow others to use their trademark for a fee without transferring ownership of the trademark. Licensing involves giving another person or entity permission to use the mark according to the agreed terms and conditions.

Trademark assignment is the complete transfer of trademark rights to another person or entity via sale of the trademark.

Working with a Trademark Professional

It is prudent to consult a trademark professional (1) before buying someone else’s trademark to prevent you from buying a useless trademark certificate or (2) before selling your trademark so the assignment can be effectively and validly done.

Buying or Selling a Trademark

In order for us, TRADEMARK ANGEL, to prepare a trademark assignment document, we need to know the following information:

  • Name/title and serial numbers of trademarks that are being assigned;
  • Name and address of the assignor;
  • Full name and title of the signatory for the assignor;
  • Name and address of the assignee; and
  • Title of the assignee (for the EU).

Trademark Assignment Fees, Government Fees and Timelines

TRADEMARK ANGEL’s professional fee for the entire trademark assignment process in the US, UK and most other jurisdictions where we file trademarks on a regular basis is US$250 per trademark. We will record trademark assignment for free if you have purchased BELLS AND WHISTLES package (in Canada, US, UK and EU).

As an option, in the US, you may also request a new certificate of registration showing the updated owner information. This may be especially useful for Amazon sellers. The additional professional fee is US$100 and the government fee is US$100.

It will take approximately 1-2 weeks for the Trademarks Office to record the assignment. It may take a further two to three weeks for the US Patent and Trademark Office to update trademark information with the new owner details.

Timelines vary in different countries, but in most jurisdictions don’t take longer than 2 months for an assignment to be recorded. In Canada sometimes it takes up to 3 months or even longer for the new owner to be reflected in the Trademark Office database.

Buying or Selling a Trademark

We also charge US$250 per trademark if you would like a trademark assignment recorded in the countries identified below. The approximate official government fee is indicated for each country.

  • US: US$40 for the 1st mark and $25 for each subsequent trademark in the same assignment document
  • Canada: US$80 (C$100)
  • UK: US$65 (GBP50)
  • EU: No government fee
  • Germany: No government fee
  • Australia: No government fee
  • New Zealand: No government fee
  • China: US$83
  • India: US$150
  • Mexico: US$20
  • Japan: US$275

We can also assist with trademark assignments in Saudi Arabia, United Arab Emirates, South Korea, Brazil, Hong Kong, Taiwan, Russian and some other jurisdictions.

Disclaimer:

Our fees and government fees may change without prior notice. Please consult with us for the most accurate pricing.

Short glossary:

Assignor – the person or entity that currently owns the trademark and wants to sell it.

Assignee – the person or entity to whom the trademark will be assigned or transferred during the trademark assignment

Trademark assignment – the transfer of an owner’s trademark rights to another person or entity

Deed of assignment – a legal agreement of trademark transfer

Trademark goodwill – an intangible asset associated with the business’ reputation. In short – it is brand’s reputation and is part of value of the business of the trademark owner.

For a more in-depth discussion about trademark assignments, please check this article.

Buying or Selling a Trademark