Trademark Assignment Agreement Template

In today’s business environment, it has become expected for business entities to establish a brand identity or, perhaps, a unique selling point for themselves. This generally becomes the intellectual property of the business entity and, therefore, needs to be protected. Business owners understand that, among all the company’s valuable intellectual assets, trademarks remain central to the business. The trademarks involving the brand identity, reputation, products, or services of a business should then be well protected.

On occasion when a company needs to transfer trademark ownership rights to a third party, the parties will sign a trademark assignment agreement. This document clearly expresses the terms under which one party transfers trademark ownership rights to another party. Using a trademark assignment form can help to ensure that the intellectual assets are not exploited and that the original owner receives due rewards for the work. A customizable trademark assignment agreement template offers convenience whenever one party requires a contract to allow another party to profit from established trademarks. 

A trademark assignment agreement is a legal document that allows one party to transfer ownership, rights, and privileges of a trademark to another person, business, or entity. A trademark could be a picture, logo, word, phrase, or anything distinctive that is associated with a brand.

To illustrate, a small coffee shop owner has built a popular brand around a special blend of coffee beans. The business has a unique logo and motto that people easily associate with the brand. Later, for whatever reason, the owner decides to sell the business along with all the known trademarks, including the coffee bean recipe, logo, and motto. The parties will need to use a trademark assignment agreement to formalize the sale and transfer the trademark rights to the buyer. This will help to ensure a smooth legal transition of the business’s trademark assets to the other party. The business owner and the buyer can look over a trademark assignment agreement sample to be sure the final document correctly reflects their agreed terms.

A trademark assignment agreement usually involves two main parties, the assignor and the assignee. Each party has very distinct duties throughout the process of the trademark transfer. Both parties have a working understanding of their roles as expressed in the trademark assignment agreement, and each of the parties contributes significantly to the successful outcome of the agreement.  

Some common keywords or concepts that a trademark assignment agreement usually includes are:

There are several very important reasons to sign a trademark assignment agreement when you intend to transfer trademark ownership to another entity, including the following.

A trademark assignment agreement form serves as a vital legal document that verifies the exclusive proprietorship and command of the trademark. A party entering into a trademark assignment agreement assures the other party of the right to use the trademark, thus minimizing the potential for disagreements or legal issues. The contract lends the reassurance needed to use the trademark confidently across various business undertakings as agreed by the parties.

Finalizing discussions around the compensation to be exchanged for the transfer of trademark rights should precede the signing of the trademark assignment agreement. The negotiated consideration could be monetary or any other valuable metric as mutually agreed by the parties. The agreement safeguards the assignee’s investment by acknowledging the rights being transferred — to use the mark and potentially earn returns.

Any human interaction has the potential for conflict, including the process of drafting a trademark assignment agreement. However, when there is clarity about the scope and responsibilities of each party as they relate to the transfer of trademark ownership rights, conflicts can be averted. Reviewing a sample assignment agreement will help the parties know which custom-made provisions to add to avoid problematic confusion and potential disputes.

There are some circumstances in which the assignor does not transfer the full ownership rights to the other party. In these cases, the assignor may reserve certain rights to use the trademark after transferring the listed rights to the other party. Licensing provisions are made in the trademark assignment agreement that allow the assignor to retain restricted use of the trademark while the assignee gains broader rights.

When two businesses intend to merge, or one business acquires the other, trademark ownership forms a very important part of the transaction. After discussions have been finalized and both parties agree on the transfer of trademark rights, a trademark assignment agreement will be drafted and signed to formalize the process.

Lawrina’s trademark assignment agreement template contains several standard sections and clauses. Each clause deals with specific aspects of the trademark transfer. Consider the following parts to include in your agreement.

The trademark assignment agreement form will have an introduction, an overview of the entire agreement that also introduces key sections of the contract. A trademark assignment agreement sample provides a simple and concise intro as a starting point.

The recitals are like a preamble of the trademark assignment agreement. They provide the general background and purpose of the agreement. This section also gives details about the parties and the trademark being assigned. A trademark assignment agreement form will have space for the appropriate details.

This section of the trademark assignment agreement is for the trademark that is being assigned. This includes the names of the trademark being transferred, its registration details, the design or logo, and any other related information.

The consideration is the value or benefit that the assignee offers to the assignor for the trademark rights. Therefore, this must be included in the trademark assignment agreement. In this section, the parties will describe the monetary consideration, equity, or any other asset of value that is being given in exchange for the trademark. The details in this part of the agreement must clearly reflect what is being offered and what is being received, including deposits, payments, and due dates as applicable.

In the trademark assignment agreement, it is necessary to conclude all approvals and formalities before signing to prevent the inchoate transfer of trademark ownership. This clause states that the assignment or transfer will only take effect when the transaction is concluded between the parties.

This section deals with relevant documentation that must be provided to facilitate the transfer of the trademark. These include all the trademark certificates, documents, or other relevant records on the trademark. The trademark assignment agreement template will give an insight into the necessary documents.

In order to avoid confusion in the market, the assignor must agree, using the trademark agreement form, not to use the transferred trademarks after the assignment. In some cases, certain continued use is permitted and will be detailed in the contract.

As mentioned earlier, this section of the trademark assignment agreement covers which party will bear what liabilities should certain situations arise. Also included may be notes to help the parties prevent certain losses rather than simply the details of financial recovery.

Included in the trademark assignment agreement template will generally be a statement permitting the assignee’s successors, assigns, or designated representatives to transfer the trademark ownership rights.

A party to the trademark assignment agreement cannot imply a waiver where there is a failure to exercise a right under the contract. In other words, the failure of a party to exercise a right cannot be interpreted as the party’s forsaking the right.

In the trademark assignment agreement template, this part provides the procedures, duration, form, and manner of notice required when vital information is to be communicated between the parties.  

This part of the trademark assignment agreement form stipulates the law under which the agreement will be governed. Except as agreed by the parties, this is usually the jurisdiction in which the trademark was registered.  

In this section, the parties may agree to several counterparts of the trademark assignment agreement that may be executed. They may also note whether electronic signatures will be considered valid.

In the event that any part of the agreement is later considered unenforceable, the parties agree to sever that part from the whole so that it will not invalidate the other parts of the agreement.

By including this clause in the trademark assignment agreement, the assignor and assignee confirm that the document constitutes the entire legally binding agreement between the parties.

A schedule or appendix that outlines all the trademarks included in the agreement may be added for easy reference. A carefully drafted trademark assignment agreement template will include space for this information.

A trademark assignment agreement is necessary when any trademark is subject to be transferred from one owner to another.