USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read updated on February 01, 2023

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

  • Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
  • Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
  • Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
  • If your trademark is state-registered, you must also record the transfer with the applicable state.
  • The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
  • Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

If you need help with USPTO trademark assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

  • Trademark Assignment Recordation
  • Trademark Transfer: Everything You Need To Know
  • How Long Does a Trademark Last
  • Trademark Law
  • Selling Trademarks
  • Trademark Checklist
  • Are All Trademarks and Names Legally Protected
  • Available Trademarks
  • What does Trademark Mean
  • Purpose of Trademark

California Trademark Attorneys

Trademark Assignment

  • For a free consultation, please tell us your issue: (application, infringement, litigation, etc.) *
  • Name This field is for validation purposes and should be left unchanged.
  • AS SEEN IN:

Layer 7

PRACTICE AREAS

  • Intellectual Property Litigation
  • Trademark Litigation
  • Trademark Infringement
  • Trademark Registration
  • Copyright Litigation
  • Copyright Infringement
  • Copyright Registration
  • Patent Litigation
  • Patent Infringement
  • Patent Registration

Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party.  Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient.  Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement.  A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

  • All involved parties – the assignor and assignee – should be identified.
  • The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
  • Consideration must be listed (i.e. what each party is receiving).
  • List the effective date of the transfer.
  • Contract must be duly executed.
  • Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public.  It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust.  The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

  • Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
  • Sale of business : A trademark owner may decide to focus on a different business or retire.
  • Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

  • Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
  • Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
  • Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
  • Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
  • Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
  • Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution.  Documenting assignments after the fact is definitely not a best practice and can lead to many issues.  It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive.  An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue.  A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor.  A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized.  Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

Happy Clients:

Bloomingdales

We serve the following localities: Los Angeles County, Long Beach, Los Angeles, Pasadena, Santa Monica, Beverly Hills, Burbank, Glendale, Malibu, Manhattan Beach, North Hollywood, Pacific Palisades, Redondo Beach, Whittier, Orange County, Laguna Niguel, Lake Forest, Anaheim, Costa Mesa, Huntington Beach, Irvine, Mission Viejo, Newport Beach, Santa Ana, San Diego County, Carlsbad, Encinitas, La Jolla, Oceanside, and San Diego.

16870 West Bernardo Drive, Suite 400 San Diego, California 92127

Phone: (858) 487-9300 Click to Contact us

Orange County

2030 main street, suite 1300 irvine, california 92614.

Phone: (949) 474-9330 Click to Contact us

Los Angeles

12121 wilshire boulevard, suite 810 los angeles, california 90025.

Phone: (310) 656-3900 Click to Contact us

  • Privacy Policy
  • Terms of Use
  • Scholarship

©2018 – Mandour & Associates, APC – All Rights Reserved Aggressive Intellectual Property Litigators® – Trademark Attorneys – Patent Lawyers – Copyright Attorneys

  • Professionals

Trademark Attorneys Trusted For Our Experience®

Trademark Assignments: How to Buy, Sell, Or Transfer A Trademark

By Eric Perrott, Esq.

assignment of the entire interest and the goodwill

Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred. 

A trademark could be a word, a phrase, a symbol, or even a shape. However, one thing all different forms of trademarks share are that they represent a single source. They are essentially a shortcut for consumers to bring to mind a company’s quality, customer service, and even values, at a glance. A trademark only has value because of the impact it has on consumers and the exposure consumers have had to that brand. 

When transferring a trademark, simply allowing another company to use the trademark is not enough. You must transfer not only the right to the word or image, but also the underlying goodwill behind the trademark.

It is crucial that trademark owners properly transfer, or “assign” their trademarks to avoid delays, confusion, or worst of all, a break in title that could invalidate the earlier use of the trademark and ruin the value of the trademark. 

A Trademark Assignment Transfers Trademark Rights

A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a “transfer of goodwill” – this is written fully as a transfer of “(1) all the property, right, title and interest in and to the Trademark including all common law rights connected therein together with the registrations therefor for the United States and throughout the world together with the goodwill of the business in connection with which the Trademark is used and which is symbolized by the Trademark; (2) all income, royalties, and damages hereafter due or payable to Assignor with respect to the Trademark, including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark; and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademark.” 

By including those clear rights and benefits, trademark owners make it clear that all the rights associated with the trademark are now the new owners’, including enforcement rights, royalty rights, and licensing rights.  However, all responsibilities are also to the new owners, such as ensuring there is no confusion with another mark, that renewals are timely filed, and any misuse of a mark is monitored to ensure the quality assurance associated with the mark. 

If the goodwill is not transferred, the new owner is essentially stating that they will not work to maintain the mark’s reputation among consumers. 

Common Issues with Preparing and Filing Assignments

When filing an assignment, either current or in the past, the assignment requires: 

  • the proper names of owners – if business entities, then complete names of active business entities
  • the date any transfer took place, whether in the past or on the date of signing 
  • the language above for all goodwill and interest and rights to sue for past infringement 
  • signatures of both the assignor and assignee – or qualified representatives of those entities

This may seem simple, but when completing a trademark assignment, it is important to understand why each of these items are needed in order to ensure that the transfer is done correctly. The mere fact that the USPTO accepts a recordation of an assignment does not mean it is valid.

 One common pitfall of attempting to file an assignment yourself is mixing up assignor or assignee, writing the wrong owner, or assigning the mark to an individual and not a business entity. Before assigning a trademark, ensure that you consider why the transfer is taking place. 

For example:

  • You may be transferring a trademark from one company you own to another as a restructuring of assets, such as a holding company or a change in tax status. 
  • You might have sold the business and all underlying trademark rights in the business name.
  • You may be transferring a mark according to a will or bankruptcy.
  • You may be transferring from your name, personally, to a newly created entity

All of these situations have their own nuances and it is easy to confuse who owns the rights with who is receiving them. No matter what, ensure that your assignment matches the owner on the trademark registration. Sometimes a trademark might change hands two or three times, with a few corporate name changes in the middle. You should be able to draw a straight line from the original owner to the new owner, and each step must be documented with the USPTO to ensure the recordation is valid. It might be a multi-step process involving multiple parties and, while complicated, it is essential that the ownership and chain-of-title are both correct.

Another common pitfall occurs when filing other documents, such as renewals. The filer is required to sign a sworn statement that the owner is correct. If the old owner files a renewal in the name of the old organization, the owner may have made a sworn statement that it was the owner of the mark, which could cause delays or even prejudice the registration in future proceedings.

Similarly, if the new owner files, they cannot simply change the name in the renewal. This will cause significant delays, as they will need to prepare an assignment and record it with the USPTO’s assignment branch before the renewal can be filed. If close to deadlines, this could get extremely complicated and cause additional fees or potential loss of rights.

Trademark assignments are an important part of the trademark lifecycle, as they allow trademark owners to buy and sell brands and further benefit from the goodwill represented by their brands. However, trademark owners should carefully consider the content of any assignment documents and ensure that they match the reality of the situation and the requirements of the USPTO.

SHARE THIS ARTICLE ON:

' src=

Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Do you need assistance with a trademark matter?

Contact an Attorney Today

Categories for this post:

General Trademark Ownership

IP Tech Knowledgy

Background hero atmospheric image for Use Trademark’s Magic Words: Assignments Must Include ‘Goodwill;’ Licenses Must Include ‘Quality Control’

Use Trademark’s Magic Words: Assignments Must Include ‘Goodwill;’ Licenses Must Include ‘Quality Control’

The two most common transactions relating to trademarks each require specific words to be effective. Trademark assignments must include “goodwill;” trademark licenses must include “quality control.” To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark. Trademarks represent the goodwill of a business, which is different from the accounting principle of goodwill listed on a balance sheet. A trademark license must include a provision by which the licensor exerts some manner of quality control over the licensee’s use of the mark. The quality control provisions can be extensive or bare-bones but must always allow the licensor to have some inspection right over the goods or services offered. The licensor must also be certain, on regular occasions, to inspect the goods or services to be sure the licensee is meeting the quality standards. While it is clear that a licensor would want quality control, a licensee should understand the benefit as well. The licensee is using a brand and should want the brand to remain strong by being properly protected with necessary quality control provisions.

Ned T. Himmelrich 410-576-4171 • [email protected]

August 19, 2021

Publications

Himmelrich, Ned T.

Technology & Intellectual Property

Trademark Assignment

Choose the state of residence or business for the entity who is assigning the trademark.

Trademark Assignment Agreement

State of Alabama

This Trademark Assignment Agreement ("Assignment"), made effective as of the date set forth at the end of this document, is agreed to by and between the following parties:

________ , ("Assignor"), having an address as follows:

and ________ , ("Assignee"), having an address as follows:

WHEREAS, Assignor is the owner of a mark (the "Mark") registered with the United States Patent and Trademark Office ("USPTO") with details as follows :

Registration number: ________ Registration date: ________ ;

WHEREAS, Assignee would like to acquire the rights, title, and/or interest in and to said Mark, as well as any trademarks granted for such in any foreign countries;

NOW, therefore, in consideration of the promises and covenants contained herein, as well as other good and valuable consideration (the receipt and sufficiency of which is hereby acknowledged), Assignee and Assignor do hereby agree as follows:

Article 1: ASSIGNMENT:

Assignor hereby sells, assigns, transfers, and conveys to Assignee the whole and complete right, title, and interest in and to the Mark that has been or may be granted in the United States and any foreign countries, together with the goodwill of the business symbolized by the Mark. This Assignment includes any goodwill of any business relating to products or services on which the Mark has been used and for which it is registered. The Assignment also includes any and all royalties, income, or other such fees (which may include damages or fees for infringement) due or payable to Assignor regarding the Mark.

Under the terms of this Agreement, Assignee is specifically able to bring any actions for infringement of the Mark, even if the infringement took place before the executed date of this Assignment.

Assignor agrees to completely cease use of the Mark or any confusingly-similar Mark. Assignor will not challenge Assignee's rights in the Mark.

Article 2: PAYMENT:

For the assignment, Assignee agrees to pay Assignor the following sum: $ ________ (________).

Assignor will accept the following methods of payment: Cash .

Article 3: COOPERATION:

Assignor agrees to cooperate with Assignee to the fullest extent possible in conveying the right, title and interest in and to the Mark. The cooperation referred to herein includes the prompt completion and execution of any papers necessary, including oaths, declarations, specifications or any other papers required to make good the complete conveyance of the Mark, as well as assistance in proceedings taking place before the USPTO or any foreign country.

Article 4: RECORDATION:

Assignor will be responsible for causing recordation with the USPTO, by submitting all documents necessary to transfer ownership of the Mark. Assignor authorizes Assignee to complete recordation, and the USPTO and any other government officials to record and register this Assignment.

Assignor will be responsible for paying all fees required to the USPTO for recordation.

Article 5: SUCCESSORS:

The rights and obligations under this Assignment will inure to the benefit and be binding upon any of Assignee's successors and assignees, as well as Assignor's.

Article 6: 885855828855:

5588 8888222222 252 82 25285225 82 825222525528, 588 22 85885 85588 8228282522 5 882282 525222222 8228222 252 2552828. 52 252 55228 822 22525 52 252 225 22 2588 52852222 552 582225222, 2588 8888222222 88 22 82 8228852525 222282882 58 22 252 5522 2552 8225 2552828 5582 882225 252 8888222222, 85885 252 82 252 85225 5522.

Article 7: 88 88822585:

88882225 85555228 525 5225282228 2552 88882225 88 222 5 25522 22, 25 8888 222 82 5 25522 22, 522 5888222222, 525222222 25 22525 82225582 82 82228882 8825 2588 8888222222.

Article 8: ENTIRE AGREEMENT:

This Assignment document constitutes the entire agreement between Assignor and Assignee and supersedes any prior or contemporaneous understandings, whether written or oral.

Article 9: HEADINGS:

Headings to this Assignment are for convenience only and shall not be construed to limit or otherwise affect the terms of this Assignment.

Article 10: JURISDICTION & GOVERNING LAW:

This Agreement shall be governed in all respects by the laws of the United States of America and the laws of the state of Alabama . Assignor and Assignee consent to jurisdiction under the state and federal courts within the state of Alabama .

IN WITNESS WHEREOF, the Assignor and Assignee have executed and delivered this Assignment:

Signature:___________________________

Date:_______________________________

State of Alabama NOTARIZATION:

On the following date: ___________________, before me personally appeared the Assignor of this Assignment, namely, ________ . I am a Notary Public in and for said the state of Alabama and ________ is personally known to me or proved to me on the basis of satisfactory evidence to be the person(s) whose name is subscribed to the within the assignment and acknowledged that he/she/they executed the same.

WITNESS my hand and official seal:

HOW TO CUSTOMIZE THE TEMPLATE

Answer the question, then click on "Next."

The document is written according to your responses - clauses are added or removed, paragraphs are customised, words are changed, etc.

At the end, you will immediately receive the document in Word and PDF formats. You can then open the Word document to modify it and reuse it however you wish.

Marquette Law Scholarly Commons

  • < Previous

Home > FACULTY > Faculty Publications > 542

  • Faculty Publications

Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone

Irene Calboli , Marquette University Law School Follow

Document Type

Publication date, publication information.

Irene Calboli, Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone, 57 Fla. L. Rev. 771 (2005)

Source Publication

57 Florida Law Review 771 (2005)

Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legislative context: trademark goodwill. Additionally, regardless of this rule, trading in trademarks has been a recurrent practice in the business world, and trademark practices have traditionally provided instruments to assist this trade. Unsurprisingly, the consequence has been inconsistent case law. More recently, the discrepancy between the rule and its enforcement has escalated, with the courts de facto drifting away from the goodwill requirement in assessing the validity of trademark assignments. Still, this trend has not established a clear path to what represents a valid assignment, and much confusion continues to surround the application of the rule. Arguing against this situation, this Article advocates for an amendment allowing free trademark transferability or assignment with or without goodwill. In support of this change, and despite common skepticism, this Article offers evidence that this amendment will not diminish but will likely foster consumer protection and competition in the marketplace.

Repository Citation

Calboli, Irene, "Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone" (2005). Faculty Publications . 542. https://scholarship.law.marquette.edu/facpub/542

Since April 25, 2012

Included in

Law Commons

Advanced Search

  • Notify me via email or RSS
  • Marquette University Law School
  • Ray & Kay Eckstein Law Library
  • Marquette University
  • SSRN Legal Research Papers
  • Marquette University Law School Faculty Blog
  • Collections

Home | About | FAQ | My Account | Accessibility Statement

Privacy Copyright

  • Practical Law

Assignment of Goodwill (Jurisdiction Neutral)

Practical law uk standard document w-016-2422  (approx. 10 pages).

  • Cross-border - IP&IT
  • International

Law Offices of Dennis Fordham

  • Business Succession Planning
  • Legacy and Estate Planning California
  • Planned Giving
  • Special Needs Planning
  • Trust and Probate Administration
  • BUSINESS SUCCESSION PLANNING
  • CALIFORNIA LEGACY AND ESTATE PLANNING
  • PLANNED GIVING
  • TRUST AND PROBATE ADMINISTRATION
  • SPECIAL NEEDS PLANNING
  • Testimonial

Assignments, Disclaimers and Powers of Appointment

          Assignments, Disclaimers and Powers of Appointment can alter the distribution of a decedent’s estate.    

          First what is and who can make an assignment? A person who has a vested — legally enforceable — interest in a decedent’s estate can “assign” – i.e., transfer – part or all of their interest to another. Generally, an inheritance vests upon the decedent’s death.  An assignment is a gift by the assignor making the assignment to the assignee receiving the assigned interest.    Assignments create tax issues for both the assignor and assignee.   

          For example, consider an unmarried father who dies intestate — without a will or trust – and is survived by a son and a daughter — his heirs.  Prior to settling dad’s estate, the son decides to give his one-half share to his sister and signs and notarizes an assignment of inheritance rights.  The assignment is then filed with the Court.  Dad’s estate, less expenses and debts, is distributed entirely to the daughter. 

          If an interest in real property inherited from a parent is assigned then the parent child exclusion from reassessment — for local real property taxes — only applies to the interest(s) belonging to the child(ren) who do not assign their interest(s).  There is no reassessment exclusion for any transfers between siblings.

          Assignments, however, almost never apply to a beneficiary’s interests in a trust.  Usually, a trust prohibits beneficiaries from assigning their interest in the trust before distribution.  The anti-assignment provision protects undistributed trust assets from claims by a beneficiary’s creditors. 

          Next, disclaimers are used when a beneficiary, or heir, refuses to accept a gift or inheritance.  You cannot force someone to receive a gift or an inheritance.  To be valid disclaimers must satisfy the following requirements: be unconditional, be in writing, and be timely (i.e., generally, within nine months of the transfer), and, when real property is involved, also be filed with the county recorder where the real property lies.  Unlike assignments, the person disclaiming their interest cannot say who receives the disclaimed interest.  A disclaimer is not a gift by the person disclaiming.  Lastly, one cannot have accepted any benefits from the property being disclaimed, such as the income from an income producing asset. 

          The person disclaiming their gift or inheritance is treated as if they had predeceased the person who made the gift.  We see who is then entitled to inherit. 

          For example, a decedent’s trust leaves a share of the decedent’s trust estate to a named beneficiary and otherwise, if he does not survive to inherit, to the beneficiary’s descendants by right of representation.  The beneficiary survives and timely disclaims.  The beneficiary’s living descendants would then inherit by right of representation. 

          Unlike assignments and disclaimers, powers of appointment are created within a person’s estate planning, e.g., a trust or will, for future use.  A power of appointment allows the power holder to say who receives a gift/distribution from a trust or an estate.  The power of appointment is either a limited power that allows gifting to certain persons or is a general power that allows gifting to anyone at all, including the power holder, the power holder’s estate and the power holder’s creditors.  Powers of appointment are used for a variety of estate planning reasons. 

          For example, a husband’s and wife’s joint estate planning may give the spouse who survives a limited power of appointment over the deceased spouse’s separate trust estate.  The limited power of appointment might allow the deceased spouse’s estate to be divided equally or unequally amongst the deceased spouse’s children as the surviving spouse sees fit after the deceased spouse’s death.

          Anyone who wants to proceed with making an assignment, a disclaimer or exercise of a power of appointment should consult a qualified attorney.  There are tax and other issues to discuss and drafting requirements to these legal instruments that benefit from the expertise of a qualified attorney. 

“Serving Lake and Mendocino Counties for nineteen years, the Law Office of Dennis Fordham focuses on legacy and estate planning, trust and probate administration, and special needs planning. We are here for you. 870 South Main Street Lakeport, California 95453-4801. Phone: 707-263-3235.”

Practice Areas

  • Legacy and Estate Planning

Upcoming Events

Why a Trust and Not a Will? Seminar

Community Event Announcement

Please call if you want to be notified of our next upcoming seminar.

Event Sign Up

Stay current on news & events. we’ll never share your address..

  • Enter Email

© 2024 Dennis A. Fordham All Rights Reserved

Law Firm Sites

IMAGES

  1. Assignment Of Entire Interest In Estate

    assignment of the entire interest and the goodwill

  2. ASSIGNMENT OF ENTIRE INTEREST IN ESTATE

    assignment of the entire interest and the goodwill

  3. 😂 Assignment of interest. Free Assignment of Entire Interest in Estate

    assignment of the entire interest and the goodwill

  4. assignment of interest Doc Template

    assignment of the entire interest and the goodwill

  5. Acquisition Goodwill

    assignment of the entire interest and the goodwill

  6. Goodwill in Accounting

    assignment of the entire interest and the goodwill

VIDEO

  1. Goodwill District Meeting: The Assignment

COMMENTS

  1. Trademark Assignments: Keeping it Valid

    Generally, for an assignment of a trademark to be valid, the assignment must also include the 'goodwill' associated with the mark (goodwill is an intangible asset that refers to the reputation ...

  2. USPTO Trademark Assignment: Everything You Need To Know

    Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill. Points To Remember. All trademark transfers must also include the mark's associated goodwill. This includes the earning power created by customer recognition of the mark.

  3. Trademark Assignment Agreement

    NOW THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, Assignor hereby conveys and assigns to Assignee the entire right, title and interest in and to the Marks together with all goodwill of the business represented and symbolized thereby with all rights to sue and recover damages and/or profits for past ...

  4. PDF Assignment of Trademark

    Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill

  5. Trademark assignment—How-to guide

    Introduction of parties. Identifies the document as a trademark assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization (s) they are. Note that each party is given a name (e.g., "Assignor") that will be used throughout the agreement.

  6. Trademark Assignment

    To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation ...

  7. Trademark Assignments: Buy, Sell, Or Transfer A Trademark

    A proper trademark assignment is not just a transfer of registration the way many business assets are transferred. There is a wording specific to trademark assignments known as a "transfer of goodwill" - this is written fully as a transfer of " (1) all the property, right, title and interest in and to the Trademark including all common ...

  8. Assignments, Licensing, and Valuation of Trademarks

    An assignment of trademark rights can be either outright, in that it results in the total transfer of ownership of such rights from one entity to another, or (in some countries/jurisdictions) partial, resulting in the transfer of only a portion of the trademark rights. The laws governing trademark assignments vary from one jurisdiction to another.

  9. Free Trademark Assignment Template & FAQs

    Start your Trademark Assignment now and get Rocket Lawyer FREE for 7 days. Get legal services you can trust at prices you can afford. You'll get: All the legal documents you need—customize, share, print & more. Unlimited electronic signatures with RocketSign ®. Dispute protection on all your contracts with Document Defense ®.

  10. Use Trademark's Magic Words: Assignments Must Include 'Goodwill

    The two most common transactions relating to trademarks each require specific words to be effective. Trademark assignments must include "goodwill;" trademark licenses must include "quality control." To ensure the transfer of a trademark is valid, the assignment must include the goodwill of the business associated with the mark.

  11. PDF How to Enforce U.S. Security Interests in Trademarks

    grant of a security interest, or a partially redacted version of the entire agreement, may be filed with the USPTO to ensure confidential information is not made public. The Importance of Goodwill Under U.S. law, any transfer or assignment of a registered or unregistered trademark must include underlying goodwill. Section

  12. Trademark Assignment

    Article 1: ASSIGNMENT: Assignor hereby sells, assigns, transfers, and conveys to Assignee the whole and complete right, title, and interest in and to the Mark that has been or may be granted in the United States and any foreign countries, together with the goodwill of the business symbolized by the Mark.

  13. Free Trademark Assignment Template

    1. ASSIGNMENT OF TRADEMARKS. The Assignor hereby sells its entire and exclusive interest in: (a) the Trademarks; (b) the registrations of and applications for registrations of each Trademark; (c) the goodwill of any business connected with or symbolized by each Trademark; (d) income, royalties, and damages payable to the Assignor and related to ...

  14. Trademark Assignment with Goodwill: A Concept Whose Time Has Gone

    2005] TRADEMARK ASSIGNMENT "WITH GOODWILL ": A CONCEPT WHOSE TIME HAS GONE 773. of the products identified by a trademark.' As long as these changes do not come unexpectedly and do not harm or defraud consumers, there is no apparent reason why assignees should be prevented from carrying them out. ...

  15. 9.4 Assigning all recorded goodwill to one or more reporting units

    Goodwill is then determined as the aggregate fair value of (1) the consideration transferred, (2) the noncontrolling interest, and (3) in a step acquisition, the previously held equity interest, less the recognized amount of the identifiable net assets of the acquired entity measured based on the acquisition method guidance of ASC 805. See ...

  16. 2

    An assignment of an expectant interest can be a valid assignment. Figure 2.3 FilmTec reverse osmosis membrane filter. Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee, and the assignor-inventor would have nothing remaining to assign.

  17. Trademark Assignment "With Goodwill": A Concept Whose Time Has Gone

    Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce because it hinges on a concept that is ambiguous and ...

  18. Avoiding the Pitfalls of Assigning an Interest in an LLC

    Saenz, the co-owners of an LLC agreed to a business divorce in which Saenz assigned the entirety of his interest in the company to Villareal. 5:20-cv-571, 2021 WL 1986831, at *2 (W.D. Tex. May 18, 2021). The assignment was part of a broad release of claims, both known and unknown. Villareal later filed suit, alleging that before signing the ...

  19. PDF TRADEMARK ASSIGNMENT & GUIDELINES

    famous "swoosh." A trademark assignment is the transfer of ownership rights in a mark from one party to another. Both the trademark and the goodwill or business associated with it must be conveyed: a transfer without goodwill is considered invalid. Keep this in mind if you revise the language of the enclosed document.

  20. Assignment of Goodwill (Jurisdiction Neutral)

    A standard document for the assignment of goodwill in connection with the purchase of a business. This document has been adapted from Standard document, Assignment of intellectual property rights and goodwill (for use with asset purchase agreement) to provide a plain English, UK-style jurisdiction neutral starting point for local counsel to ...

  21. PDF TRADEMARK ASSIGNMENT AGREEMENT

    Assignment. Assignor hereby irrevocably assigns, grants, and transfers to Assignee all rights, title, and interest in and to the Mark in perpetuity. Assignor further authorizes the United States Patent and Trademark Office and all other agencies in jurisdictions outside the United States to record the transfer of the registration.

  22. 13.5 Assignment and impairment of goodwill (post-ASU 2017-04)

    The definition of the levels at which goodwill is assigned/allocated and tested for impairment varies between the two frameworks. Specifically, in determining the unit of account for goodwill impairment testing, US GAAP uses a segment reporting framework while IFRS focuses on the lowest level of identifiable cash inflows (cash generating unit) or groups of cash generating units at which ...

  23. Assignments, Disclaimers and Powers of Appointment

    A person who has a vested — legally enforceable — interest in a decedent's estate can "assign" - i.e., transfer - part or all of their interest to another. Generally, an inheritance vests upon the decedent's death. An assignment is a gift by the assignor making the assignment to the assignee receiving the assigned interest.