Trademark Assignments Explained
When you think about your business, you probably picture your products, services, and customers. But your trademark—your business name, logo, or tagline—is just as important. Like real estate or equipment, trademarks can be sold, transferred, or inherited. This process is called a trademark assignment.
If you’re buying or selling a business, merging with another company, or simply transferring rights, knowing how assignments work can save you time and prevent costly mistakes.
What Is a Trademark Assignment?
A trademark assignment is the legal transfer of ownership from one party (the current owner) to another (the new owner). Once the transfer is complete, the new owner gains all rights to use the mark, enforce it, and license it to others.
Think of it as transferring the title of a car: the new owner doesn’t just get the vehicle, they get the full legal rights that come with it.
Assignments must be in writing and properly executed. The U.S. Patent and Trademark Office (USPTO) records these documents to make the transfer official.
When Can You Assign a Trademark?
Not all trademarks can be assigned at any time. Here’s what business owners need to know:
- Registered trademarks and pending applications filed under use in commerce can be assigned along with the goodwill of the business. Goodwill simply means the reputation and customer recognition associated with the brand.
- Intent-to-use applications (filed before you’ve started using the mark) generally cannot be assigned until you’ve filed proof of use. The only exception is if you’re selling or transferring the entire business—or the portion connected to that trademark—and it’s ongoing and active.
This rule helps prevent “trafficking in marks,” where people might otherwise buy and sell trademarks like stock without actually using them in commerce.
How to Record a Trademark Assignment
The USPTO makes recording assignments straightforward through Assignment Center, its online filing system. You’ll need a myUSPTO.gov account with two-step verification to access it.
Here’s the process in simple terms:
- Draft and sign a written assignment agreement.
- Log in to Assignment Center and submit the document electronically.
- Pay the required fee.
- The USPTO records the assignment as submitted—it does not verify the accuracy of the information.
Because the USPTO doesn’t double-check details, it’s essential that the information in your filing is correct. Errors could create future legal disputes.
Why Trademark Research Matters Before an Assignment
Before you buy or accept a trademark through assignment, it’s crucial to understand exactly what rights you’re acquiring. That’s where comprehensive trademark research comes in.
A comprehensive trademark clearance search looks for:
- Similarities in sound, appearance, or meaning of other marks.
- The same or related goods/services across federal trademark and state trademark databases.
- Unregistered (common law) uses found in websites, social media, business directories, and more.
Without this research, you could purchase a trademark that looks clean on paper but is vulnerable to challenges or conflicts. For example, buying a mark that sounds similar to an existing one in your industry could expose you to infringement disputes.
Example in Practice
Imagine you’re acquiring a coffee shop brand with a registered logo. A proper assignment transfers ownership of that logo to you, along with the goodwill it represents. But if another café across the country has been using a nearly identical mark under common law rights, you could still face issues expanding your brand. This is why research before assignment is so valuable.
Key Takeaways
- A trademark assignment legally transfers ownership from one party to another.
- Registered marks can be freely assigned with goodwill; intent-to-use applications have stricter rules.
- Assignments must be written, signed, and recorded with the USPTO through Assignment Center.
- Comprehensive trademark research helps you avoid buying into potential conflicts.
Take the Next Step with TradeMark Express
If you’re considering buying or selling a trademark, don’t go in blind. At TradeMark Express, we provide comprehensive trademark searches that help you understand the real value and risks tied to a mark. Protect your investment by making informed decisions before recording your assignment.