Question 1

What is a trademark assignment agreement?

Accepted Answer

A trademark assignment agreement is a written legal contract in which the owner of a trademark (the assignor) transfers all or part of its rights in the mark to another party (the assignee). Under U.S. trademark law, a trademark is inseparable from the goodwill of the business it identifies — so a valid trademark assignment must transfer both the mark itself and the associated goodwill. An assignment without goodwill is called an 'assignment in gross' and is invalid under the Lanham Act, potentially voiding the transfer entirely. A proper assignment includes the identification of the mark (including registration number), the effective date, the consideration paid, explicit transfer of goodwill, and warranties about ownership and enforceability.

Question 2

What is the difference between a trademark assignment and a trademark license?

Accepted Answer

An assignment is a permanent transfer of ownership — the assignor gives up all rights in the mark and the assignee becomes the new owner. A license is a temporary grant of permission to use the mark while ownership remains with the licensor. Assignments are used in business sales, intercompany transfers, and IP acquisitions. Licenses are used to let another party use the mark (often in exchange for royalties) without transferring ownership. The two documents serve very different purposes and should not be confused: an assignment ends the assignor's rights; a license does not.

Question 3

Does the assignment have to be in writing?

Accepted Answer

Yes. Under 15 U.S.C. § 1060, an assignment of a registered U.S. trademark must be in writing and duly executed by the assignor to be valid. Oral trademark assignments are not enforceable for registered marks, and common law mark assignments — while technically possible orally in some jurisdictions — should always be reduced to writing to avoid disputes and to enable recordation with the USPTO. A written assignment also provides the proof of chain of title that buyers, licensees, and courts expect to see when trademark rights are questioned.

Question 4

What does 'with goodwill' mean and why is it required?

Accepted Answer

Goodwill is the reputation, customer loyalty, and brand equity that a business develops over time. U.S. trademark law requires that a trademark be transferred together with the goodwill of the business (or portion of the business) that uses the mark, because the purpose of a trademark is to identify the source of goods or services to consumers. Transferring a trademark without the associated goodwill would be misleading — the new owner would be using the mark without any connection to the reputation it represents. An assignment that tries to transfer a mark without goodwill is called an 'assignment in gross' and is invalid under the Lanham Act. Every properly drafted trademark assignment must explicitly state that the mark is being transferred together with the goodwill associated with it.

Question 5

Do I need to record the assignment with the USPTO?

Accepted Answer

Recordation with the USPTO is not required for the assignment to be valid between the parties, but it is strongly recommended. Under 15 U.S.C. § 1060(a)(4), an assignment is void against a subsequent purchaser for valuable consideration without notice unless it is recorded within three months of execution or prior to the subsequent purchase. Recordation also updates the official USPTO records to reflect the new owner, which is important for maintenance filings, enforcement actions, and future transactions. The USPTO recordation fee is $40 per mark for electronic filings, making it a very cheap insurance policy.

Question 6

How do I record a trademark assignment with the USPTO?

Accepted Answer

File the assignment through the USPTO's Electronic Trademark Assignment System (ETAS) at assignments.uspto.gov. You will need to upload a copy of the signed assignment document, identify the trademark registration numbers or application serial numbers affected, pay the recording fee ($40 per mark), and provide the contact information for the assignor and assignee. After filing, the USPTO issues a recordation notice with a reel and frame number. The recorded assignment becomes part of the public record and can be searched by anyone on the USPTO Assignment Database.

Question 7

What if the trademark is still pending (not yet registered)?

Accepted Answer

Pending applications can be assigned, but there are special rules. An intent-to-use (ITU) application filed under 15 U.S.C. § 1051(b) can only be assigned before the Statement of Use is filed if the assignment is to a successor to the applicant's ongoing and existing business to which the mark pertains. This restriction prevents parties from filing ITU applications to speculatively assign. Use-based applications and registered marks can be freely assigned, subject to the goodwill requirement. If you are assigning an ITU application, confirm that it qualifies under the successor-in-interest rule before signing.

Question 8

How much does a trademark assignment cost?

Accepted Answer

Using our attorney-reviewed template, you can draft a trademark assignment for free. If you hire an IP attorney, expect $500–$2,500 for a standalone assignment, or $1,500–$7,500+ if the assignment is part of a larger business sale with due diligence. The USPTO recordation fee is $40 per mark for electronic filings. International trademark assignments (e.g., through WIPO's Madrid Protocol) involve additional fees that vary by country. For a simple intercompany assignment or small business deal, the template-based approach is usually sufficient. For larger transactions with significant brand value, use an attorney.

Question 9

Can I assign a trademark that I haven't yet used in commerce?

Accepted Answer

You can assign a use-based trademark (for which actual use has been made) or a registered mark freely, so long as the assignment includes the associated goodwill. You cannot assign an intent-to-use (ITU) application before a Statement of Use or Amendment to Allege Use has been filed unless the assignment is to a successor to the applicant's business — and even then, the assignment may be scrutinized. Common law marks (used but not registered) can be assigned with goodwill just like registered marks. If there has been no use at all and no registration, there is no trademark to assign.

Question 10

What warranties should the assignor provide?

Accepted Answer

Standard warranties in a trademark assignment include: (1) ownership — the assignor is the sole and exclusive owner of the mark; (2) authority — the assignor has full right and authority to execute the assignment; (3) no encumbrances — the mark is free and clear of liens, security interests, and other encumbrances; (4) no prior assignments — the assignor has not previously assigned or licensed the mark in a way that would conflict with this assignment; (5) validity — the mark is valid and subsisting, with all maintenance filings current; (6) no infringement claims — no third party has asserted that the mark infringes any other mark; (7) no pending disputes — no oppositions, cancellations, or litigation affecting the mark; and (8) use in commerce — the mark has been continuously used since first use.

Question 11

What happens to existing licenses when the trademark is assigned?

Accepted Answer

Existing licenses generally remain in effect and bind the new owner, because the assignee takes the mark subject to existing valid licenses (sometimes called 'subject to the cloud'). The assignment agreement should disclose all existing licenses in a schedule and assign the rights and obligations under those licenses to the assignee. The licensees should be notified of the assignment and, depending on the license terms, may need to consent to the assignment or to an assignment of the license itself. Failing to address existing licenses in the assignment is a common source of post-closing disputes.

Question 12

Can a trademark be assigned to multiple parties?

Accepted Answer

A trademark can be assigned to multiple parties as joint owners, but joint ownership of trademarks is generally discouraged because it creates complex enforcement, quality-control, and licensing issues. If joint ownership is unavoidable, the assignment (and any joint ownership agreement) should specify how decisions are made, how royalties are shared, how the mark is enforced against infringers, and what happens if one owner wants to transfer their interest. Most trademark attorneys recommend that the mark be held by a single owner and licensed to other users rather than jointly owned.

Question 13

Does a trademark assignment trigger any taxes?

Accepted Answer

Potentially, yes. A trademark assignment for consideration is a taxable sale of intangible property. The assignor may recognize capital gain (or ordinary income, depending on holding period and basis) on the difference between the sale price and their adjusted basis. The assignee may be able to amortize the purchase price over 15 years under IRC § 197. State sales tax generally does not apply to intangible property, but some states impose documentary or transfer taxes on IP assignments. International assignments can trigger withholding tax and transfer pricing rules. Always consult a CPA before executing a significant trademark assignment.

Question 14

What if the trademark is registered in other countries?

Accepted Answer

Each country's trademark office has its own recordation process. An assignment valid in the U.S. may not automatically be recognized in other jurisdictions. For marks registered through WIPO's Madrid Protocol, the assignment can be recorded with the International Bureau through the basic office, and WIPO will then notify the designated national offices. For separately filed national registrations (common in countries that are not Madrid members), a local assignment filing is required in each jurisdiction. Use a global IP assignment that covers all relevant jurisdictions, and budget for separate recordation filings in each country where the mark is registered.

Free Trademark Assignment Agreement Forms

What Is a Trademark Assignment Agreement?

With Goodwill

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Trademark Assignment Agreement

Section 1: Parties

Section 2: Trademark

Section 3: Goodwill Transfer

Section 4: Execution

Types of Trademark Assignments

Full Assignment with Goodwill

Assignment with Business Sale

Intra-Company Assignment

Security Interest Assignment

Partial Assignment by Class

International Assignment

Common Law Mark Assignment

Assignment with License-Back

Why Goodwill Matters: The Assignment-in-Gross Problem

How to Assign a Trademark

Confirm ownership and chain of title

Identify the exact mark and registration

Confirm goodwill transfer

Draft the assignment agreement

Sign and notarize

Record with the USPTO

Update international registrations

Notify licensees and other third parties

Key Components

Parties

Mark identification

Goodwill clause

Consideration

Effective date

Warranties

Indemnification

Further assurances

Governing law

Signature block

USPTO Recordation

Warranties & Indemnification

Legal Requirements

Sample Trademark Assignment

TRADEMARK ASSIGNMENT AGREEMENT

Frequently Asked Questions

Official Resources

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