1. What is an assignment?
An assignment is an outright transfer of all of the owner's rights in intangible property, such as a trademark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark. An assignment is very different from a license, which is the grant of mere permission to use a mark in some limited manner, and generally regarded not to transfer any property rights in the trademark.
2. When do assignments occur?
The assignment of a mark by the mark owner may be a relatively isolated transaction, or it may occur as part of a much larger disposition of tangible and intangible assets, such as the sale of the assets of a business. If a purchaser acquires shares in a company, the marks are not automatically assigned through the share acquisition, but rather remain property of the company whose shares were acquired by the purchaser, absent a separate assignment agreement.
3. What is necessary to effect an assignment?
The assignment must:
a. be given for consideration, or else made under seal
b. clearly identify the marks
c. clearly identify the assignor and assignee
d. clearly indicate that goodwill is included (see #6 below)
An assignment of rights in a mark may be proven by oral evidence. However, proving an assignment generally is much easier if there is a written document. In all cases, there must be evidence of an intention on the part of the assignor to transfer ownership of the mark and the associated goodwill to the assignee.
4. How are assignments of federal trademark registrations and applications recorded?
To record an assignment of a federal registration or a pending application, there must be a written form of assignment. It is not necessary to record the assignment of a federal registration or application; however, if an assignee fails to record the assignment in the United States Patent and Trademark Office (USPTO) within three months of the date of the assignment, a subsequent bona fide purchaser who records its assignment may acquire rights despite the first assignee's prior claim, at least with respect to rights flowing from the federal registration or application.
To record an assignment in the USPTO, the following must be provided:
a. One of: (i) an original or copy of the assignment document, (ii) a copy of an extract from the assignment document evidencing the effect on title, or (iii) a statement signed by both parties to the assignment explaining how the conveyance affects title;
b. An English translation, if the original document is not in English;
c. A cover sheet including (i) the name of the assignor, (ii) the name and address of the assignee, (iii) a description of the interest conveyed, (iv) each application or registration number, if known, (iv) a name and address for correspondence, (v) the date of execution of the assignment, and (vi) the signature of the party requesting recordation; and
d. The appropriate fee.
5. Are there other issues that should be considered?
Yes, and these include:
a. Related marks (e.g., related words, slogans, designs or other marks) and trade dress
b. Rights of action for past infringements
c. Representations and warranties
d. Indemnification provisions
e. Responsibility for recording the assignment, and paying fees
f. Licenses or security interests previously granted by the mark owner
6. What is an "assignment in gross"?
A mark is a symbol of the mark owner's goodwill in the goods or services associated with the mark. The rule, both under the common law and the Lanham Act, is that a mark cannot be assigned apart from the goodwill in the mark. The term “assignment in gross” is often used to describe a purported assignment of a mark without the associated goodwill. An “assignment in gross” is invalid, and the assignee acquires no rights by such a purported assignment. The rule prohibiting “assignments in gross” is intended to protect the public from the deception that might arise if the assigned mark becomes associated with goods or services of a different nature or quality than was previously the case.
7. Can an intent-to-use application be assigned?
An intent-to-use application cannot be assigned, unless either:
- the applicant has already filed a verified statement of use under Section 1(d); or
- the application is assigned to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
8. Do assignments of foreign marks raise different issues?
The laws of other countries regarding assignments of marks in those countries are in some cases very different than relevant United States laws. Among the issues worth noting are:
- trademark laws of other countries will impose their own requirements regarding the form of an assignment, the information regarding the assignee and the assignor, identification of the marks, fees, and whether notarization or legalization is mandated;
- many countries permit assignments in gross;
- some countries require that actual, rather than nominal consideration be expressed, and taxes (e.g., "stamp duties") may be charged upon the value of the assignment;
- the ability to assign marks may be affected by restrictions, such as prohibitions on the use of holding companies to own marks; and
- in some countries, if someone owns two confusingly similar marks, assignment of one without the other is prohibited.
Additional information
Country Guides: Essential Information on Trademark Protection Worldwide
Trademark Administration: A Guide for Paralegals and Trademark Administrators
