Trademark Assignment Agreement

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A trademark assignment agreement provides a record of ownership and function similar to a digital version of a bill of sale. By using a trademark assignment agreement, you can transfer the property rights in a mark or multiple marks. Create your legally binding document on Lawrina, submit it wherever necessary, and keep the template for multiple uses.

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Template Description

Paper titled "Trademark Assignment Agreement"; the Copyright sign, magnifier, man and woman talking

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. 

What Is a Trademark Assignment Agreement?

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.

Parties of the Trademark Assignment Agreement

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.  

  1. Assignor: The assignor is the individual or entity that currently owns a trademark and wishes to transfer that trademark right and ownership to another party.

  2. Assignee: The assignee is the recipient of the trademark rights and ownership. An assignee may be an individual, a business entity, an institution, or any other legal entity that seeks to acquire the trademark for reasons agreed to by the assignor.

Key Terms

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

  • Trademark: This is any unique symbol, sign, design, word, phrase, or combination of any of these that distinguishes a business’s products or services from those of other businesses. For example, popular brands like Facebook, “X” (formerly Twitter), and McDonald’s each have one or two distinctive symbols or logos that make each brand unique.  

  • Assignment: An assignment is the actual transfer, allocation, or handover of the ownership and rights to the trademark from the assignor to the assignee. Simply, one party assigns specific trademark rights to another party.

  • Consideration: Consideration is the value or benefit that the parties agree to exchange in return for the trademark transfer. This could be money, equity, or another item of value.

  • Representations and warranties: These are the guarantees that one party, usually the assignor, gives to the other party about the authenticity, actual ownership, and non-interference of the trademark. 

  • Indemnification: When either party suffers a loss, damages, or legal action arising from any misrepresentation in the transfer of the trademark rights, the party responsible would be liable for the losses suffered.

Importance of a Trademark Assignment Agreement

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.

Ensuring Legal Ownership

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.

Protecting the Assignee’s Investment

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.

Avoiding Confusion and Disputes

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.

Providing Licensing

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.

Facilitating Mergers and Acquisitions

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.

What Should be Included in a Trademark Assignment Agreement?

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.

Introduction

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.

Recitals

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.

Assignment of Marks

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.

Consideration

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.

Assignor
Representations and Warranties

To ensure the validity of the trademark ownership, the assignor must guarantee that the trademark is authentic and free from all risk or liability. Therefore, the trademark assignment agreement template has space to state all the warranties expressed by the assignor to the agreement.

Assignee
Representations and Warranties

The assignee also must provide representations and warranties. For example, in the trademark assignment agreement, the assignee must attest to having the capacity to receive and use the trademark being assigned.

No Early Assignment

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.

Documentation

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.

No Further Use of Marks

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.

Indemnification

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.

Successors and Assigns

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.

No Implied Waiver

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.

Notice

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.  

Governing Law

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.  

Counterparts/Electronic Signatures

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.

Severability

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.

Entire 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.

List of Trademarks

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.

When Is a Trademark Assignment Agreement Needed?

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

Common Use Cases

  • Business expansion: A thriving business that requires expansion into new locations or new markets may need to have a trademark assignment agreement to enable the transfer of trademark ownership rights to those places. The trademark laws associated with the host or parent company may be different from those of the new locations. As such, a trademark assignment agreement can facilitate a successful transition.

  • Mergers and acquisitions: In a typical merger or acquisition, the assets of one company will have to pass to another company. These assets include trademarks. Therefore, a trademark assignment agreement would be needed to ensure the proper transfer of trademark ownership between the parties.

  • Brand licensing: Once a business has a reputable brand identity, people or businesses may wish to affiliate with the brand. They will require the owner’s permission to use the trademarks connected with the business’s products or service. The parties can use a trademark assignment agreement to stipulate the terms and manage the expectations of the parties. A sample assignment agreement written for this purpose will show the language necessary for this type of agreement.

  • Ownership change: When the ownership of a business changes, trademark rights generally must also change and be transferred to the new business owner. To make this happen, the parties will need to draft a trademark assignment agreement.

When Not To Use the Trademark Agreement

When there is only a temporary need to use a trademark, a trademark assignment agreement is not needed. In these cases, it may be sufficient to use a licensing agreement that gives the recipient the authority to use the trademark within a limited period of time.

Legal Disclaimer

Please note that Lawrina does not provide any legal services. The information on Lawrina’s Site and its downloadable content, including legal articles and templates, shall not be considered legal advice and is not guaranteed to be correct, complete, and up-to-date. If you require legal advice on your issue, we recommend you contact a qualified attorney licensed in your state. You personally assume full responsibility for any consequences, damages, and costs associated with your use of any content of Lawrina Services available on Lawrina’s Site.

By using Lawrina’s Site you agree with mentioned above and give your irrevocable consent to comply with and to be bound by the provisions of Lawrina Service terms. 

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Frequently Asked Questions

Do trademark assignments have to be notarized?

While a notary’s signature is not a strict requirement, it does provide an extra layer of authenticity that the parties truly have agreed to be bound by the trademark assignment agreement form.

Does a trademark assignment need to be in writing?

Yes, a written agreement, such as one that can be created using a trademark assignment agreement template, will serve as evidence. This document specifically shows the transfer of ownership rights of a trademark or trademarks. The contract can also be used to enforce a party’s rights should any dispute arise.

What is the difference between the assignment of a trademark and licensing of the trademark?

In a trademark assignment agreement, the trademark ownership right usually is totally transferred from one party to another party. The other party becomes the owner of the trademark. On the other hand, licensing a trademark allows one party to give temporary permission to another party to use the trademark under specified circumstances. The ownership right ultimately goes back to the original owner after the agreed timeline.