Trademark Assignment

Summary

This template trademark assignment may be used to assign trademarks which are the subject of U.S. registrations or pending U.S. use-based applications, or which are unregistered, common law trademarks, and may be recorded at the U.S. Patent and Trademark Office (USPTO) and/or foreign trademark offices. This template includes practical guidance, drafting notes, alternate clauses, and optional clauses. This template may also be used to assign an intent-to-use based U.S. trademark application where a statement of use or an amendment to allege use has not been filed with the USPTO, but only if certain language referenced herein is included (see also Trademark Assignment (ITU-based Application)). Failure to include such language will result in the invalidation of the assignment. This template is often executed pursuant to or in conjunction with more complex agreements between the parties (such as merger and acquisition agreements and joint venture agreements), which require the formal assigning and recording of trademarks among other transactions being pursued. If such an agreement is not part of your transaction, you may use a trademark acquisition agreement to more fully elaborate the rights and obligations of the parties (including financial, confidential, and other potentially sensitive terms), and attach this assignment as an exhibit. Confirm whether any additional information is required and modify accordingly if recording outside the United States. For guidance on assigning trademarks, see Assignments of Trademarks, Gilson on Trademarks § 3.12, and Gilson on Trademarks § 28.03. For a related checklist, see Trademark Assignment Checklist. For a sample retroactive assignment agreement, see Trademark Assignment (Nunc Pro Tunc). For an overview of transactions involving trademarks, see Trademark Transactions Resource Kit. For guidance on assigning intellectual property (IP), including trademarks, as part of an M&A transaction or joint venture, see Intellectual Property Assignment Agreements and Licenses in M&A Deals, IP Asset Acquisitions, and Intellectual Property Assets and Joint Ventures. For guidance on managing an intellectual property (IP) portfolio, see In-House Intellectual Property & Technology Resource Kit.