Trademark Assignment

Trademark Assignment, also known as Change of Ownership, happens when ownership of a trademark changes. The most common cause for this, unexpectedly, is organizational changes and not mergers or acquisitions, which are the second most likely cause.

A trademark assignment is the legal transfer of ownership of a trademark from one party to another.

It can apply to:

• Registered trademarks
• Pending applications
• In some countries — even unregistered (common law) marks

Trademarks are a vital part of a company’s assets and keeping a clear record of ownership is essential. This is the case with other types of property, but trademarks are frequently overlooked, which can lead to all types of issues, including not being able to enforce existing trademarks.

If you sell a company, brand, or product line, you are often required to assign the trademark.

When trademark assignments are needed

• Selling a company or brand
• M&A transactions
• Internal group restructuring
• Investor requirements
• Moving IP from an individual to a company

If the trademark is not assigned correctly, the buyer does not own the trademark — even after paying for it!

Why recordal matters

If a trademark is not recorded in a timely manner, it may become no one’s property, and it may become very difficult to enforce it, as you can’t legally prove that you own it.

Process of trademark assignment

When assigning a trademark to a new owner, several things are vital:

A deed of assignment (also known as an assignment agreement, trademark/IP transfer contract, etc.). This is a document that confirms that the transfer of ownership took place, when it took place, and what the conditions of this transfer were.

In some cases, there is no deed and a letter of assignment is used. A letter is a statement that the owner wishes to transfer trademarks to a different entity. It’s acceptable in some countries, while others require a deed.

Power of attorney from the new owner. The usual case is that owners need to be represented by a qualified attorney before the Trademark Office. Thus, a new owner will need to appoint a new attorney or keep the old one by submitting a new power of attorney.

The documents need to be in accordance with local requirements, in the official language of the country where the IP is registered, and properly signed/legalized.

A template of the deed

We can provide you with a template of the deed of assignment accepted in the majority of the countries where Bonamark works (that’s 188 countries).

Price of a trademark assignment

The price depends on the country and ranges from $150 to $1,500. Usually, it’s around $250–350 per trademark if going through Bonamark. The actual price will depend on the fees of your agent and can be significantly higher.

As usual, the price consists of two parts: a legal fee and an official (government) fee.

International Trademark Assignment

When transferring an international portfolio, it’s very important to make sure that all documents are properly legalized and the assignment is filed in a timely manner. Some countries have limitations on when an assignment can take place after a merger or acquisition.

What makes a trademark assignment challenging?

Country-specific differences! Different countries equal different requirements, and some countries make changing owners a very difficult and expensive process. Here I will name a few:

• US: You can’t transfer a pending USPTO trademark that was filed based on an Intent to Use. Doing so will result in trademark cancellation. Also, you must transfer all the associated goodwill; this must be specifically mentioned in the deed of assignment.
• UK: UKIPO recordal required. A special UKIPO trademark transfer form can be used instead of a deed of assignment.
• India: A deed of assignment must mention the price of the trademark to calculate a transfer tax.
• UAE: All documents must be legalized to assign a trademark.
• Madrid System: The previous representative of the previous owner must approve the transfer digitally.

Common mistakes businesses make

During my practice, I’ve seen many different mistakes made by companies willing to assign their trademark.

Here is a short list of such mistakes:

Trademark owned by founders, not the company. Company A was acquired by Company B, but after completing the transaction, Company B realized that trademarks were owned by founders, not Company A, and their deed of assignment was invalid. Luckily, the founders transferred the trademarks voluntarily.

No written assignment. We shake hands, you hand me the keys. This doesn’t work for trademarks. You need your paperwork done, period.

Assignment not recorded. “I got the docs, won’t bother informing the Trademark Office.” The transfer is not recorded, your documents can lose validity, and the trademark will become no one’s property.

Wrong entity name. Bonamark’s legal team in 2019 had a case where an assignment agreement contained a minor mistake (LLC instead of INC.), which made it invalid. The original corporation was already dissolved, so no one could sign a new deed.

Missing goodwill. Sometimes assignments can be cancelled if the deed does not contain certain statements, for example, about goodwill.

Forgetting foreign registrations. This is a common issue and we recommend watching this video explaining why it’s important to timely assign your trademarks.

When you should talk to a trademark professional vs where you can do it yourself

You can update the register yourself if this is an internal transfer — for example, if you transfer your IP assets from Company A to Company B in your home country.

However, if you have foreign registrations, are in the middle of a merger or acquisition, or if there are any investors involved, we recommend hiring a trademark expert to handle the trademark transfer.

If you’re transferring a brand, restructuring your company, or preparing for investment, a correctly structured trademark assignment can save significant time, money, and legal risk.