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A trademark assignment is a document signed by the original owner (“assignor) transferring ownership of the trademark to a new owner (“assignee”).In most cases, only the assignor needs to sign the trademark assignment.Keep in mind that under these circumstances, both owners must file the necessary post registration documents including renewal applications.
Our firm can assist you with filing an assignment; even a change of name to your business will affect the title to your trademark application or trademark registration and should be recorded as an important link in the chain of title.
If you have questions, concerning whether a particular document should be recorded with the USPTO or if you have an assignment inquiry, please contact our office for a courtesy consultation.
The USPTO will record only those assignments that have been recorded in the International Register.
Trademark registrants must perform their due diligence before filing their post registration documents.
The USPTO provides a helpful online resource on trademark assignments.
It is important to specify the details of the trademark(s) to be transferred.An executed trademark assignment must be properly recorded with the USPTO to establish a clear chain of title from the old owner(s) to the new owner(s).This will enable the public to search and recognize the new trademark owner.Assignments of trademarks may be express or implied.Both trademark registrations and applications may be assigned.The trademark assignment should include 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.If the current owner of the trademark is different than the owner reflected in the USPTO records, then steps must be taken to update the records.Documents must be filed with the USPTO to establish a chain of title for the mark from the original registrant to the current owner.Trademark Assignments And The Assignment Division Of The USPTOOnce Trademark rights exist they may be handled in a manner similar to any other type of property.Trademark rights can be assigned in whole or in part and licensed either on an exclusive or non-exclusive basis.