Westchester Women's Bar Association

Trademark Assignments

Trademark Assignments and the Assignment Division of the USPTO

Once Trademark rights exist they may be handled in a manner similar to any other type of property. Trademark rights can be assigned in whole or in part and licensed either on an exclusive or non-exclusive basis. Assignments of trademarks may be express or implied. Both trademark registrations and applications may be assigned. If the trademark application is based on a bona fide intent to use, then the assignment must occur subsequent to the filing of an allegation of use or a statement of use (unless the assignee is a successor of the applicant's business). Once recorded with the United States Patent & Trademark Office ("USPTO"), the record shall be prima facie evidence of execution. Trademark owners need to be mindful that assigning a mark without the related goodwill or assigning an intent-to-use application without meeting the statutory requirements can invalidate the trademark rights.

Trademark assignments must be in writing. The recording date of a document is the date it is filed with the USPTO. There may be assignments that are in whole or others that are considered to be partial assignments. This can become complicated if more than one person owns the trademark. A co-owner may assign his or her interest in a mark. In addition, a party who is the sole owner may transfer a portion of the mark to a third party, such as transferring a 50% share.

Yet another scenario may occur if the trademark owner wishes to assign a portion of a business together with the good will and trademarks associated with that portion, but retain rights in the trademark for uses relating to another portion of the business. In essence, what this means is that if a trademark owner was issued a trademark registration for Apparel in International Class 025, leather handbags in International Class 018, and jewelry in International Class 014 and then decides his retail store will no longer sell handbags and jewelry, he may assign those two classes to a third party.

A trademark owner that opts to file a partial assignment is strongly encouraged to file a request to divide with the USPTO and this will enable the Trademark Office to more effectively monitor post registration filings and confirm that the USPTO records reflect proper ownership information. Keep in mind that under these circumstances, both owners must file the necessary post registration documents including renewal applications. However, a trademark owner is not permitted to use an assignment to impose geographic restrictions on a registration. This should be accomplished via a concurrent use proceeding.

International Registrations may also be assigned. An extension of protection may be assigned with the goodwill associated with the mark, but only to a third party that is a national of, is domicile in, or has a bona fide industrial commercial establishment in a country that is a contracting party to the Madrid Protocol. Assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization. The USPTO will record only those assignments that have been recorded in the International Register.

Trademark registrants must perform their due diligence before filing their post registration documents. If the current owner of the trademark is different than the owner reflected in the USPTO records, then steps must be taken to update the records. Documents must be filed with the USPTO to establish a chain of title for the mark from the original registrant to the current owner. It is also important to note that the Assignment Branch of the USPTO does not review the substance of documents submitted for recording. The USPTO will determine the effect of a document only when an assignee attempts to take action with regard to the application or registration.

Our firm can assist you with filing an assignment; even a change of name to your business will affect the title to your trademark application or trademark registration and should be recorded as an important link in the chain of title. If you have questions, concerning whether a particular document should be recorded with the USPTO or if you have an assignment inquiry, please contact our office for a courtesy consultation.

Client Reviews
Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs