General Information
A trademark (or servicemark) assignment is the transfer of one’s ownership of a mark to another person or entity. The prior owner (assignor) gives up all rights to the mark to the new owner (assignee), who is then expected to maintain the level of quality previously associated on the goods or services represented by the mark.
A federal trademark may be assigned by filing an assignment with the USPTO. Along with the mark itself, the assignment transfers “the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” 15 USC 1060(a)(1). If the assignment was made through a legal document (such as articles of merger, a will, or a mortgage), that document must be recorded with the USPTO. 37 CFR 3.11(a).
In Kentucky, a registered trademark or servicemark may be assigned to another by filing an assignment with the Kentucky Secretary of State’s office. Along with the mark itself, the assignment transfers “the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark.” KRS 365.583(1). If the assignment was made through a legal document (such as articles of merger, a will, or a mortgage), that document may be recorded with the Secretary of State. KRS 365.584(3).
Purpose/Necessity
An assignment may be used:
- After a business is sold and the mark’s rights are transferred to the purchaser
- As security for a debt (through a mortgage or other security interest)
- As a bequest in a will or an asset passed to heirs by intestacy/probate
- As part of the distribution of assets following a bankruptcy proceeding
- The mark’s owner retains ownership but changes his or her name
- The mark’s owner retains ownership but changes its business name or entity type
- Any other instance where the owner of a mark wishes to transfer it to another
Recording an assignment provides the following advantages:
- The assignee gains all rights to the mark and will be responsible for making all renewal and maintenance filings, may take legal action to prevent infringing uses of the mark, etc. As the party receiving ownership of the mark, it is logical to transfer these rights and responsibilities to the assignee.
- An assigned registration will show title and ownership of the mark in the assignee in a federal trademark search or a Kentucky trademark search, as appropriate.
- A recorded assignment is valid against a subsequent purchaser for valuable consideration without notice. 15 USC 1060(a)(4) and KRS 365.583(1).
- By recording the assignment in the Kentucky Secretary of State’s office, a rebuttable presumption as to the validity and execution of the assignment is created. KRS 365.583(4).
Frequently Asked Questions
- Must the trademark/servicemark be registered before an assignment may be filed?
- Federal – Yes, only a filed or registered mark may be assigned. 15 USC 1060(a)(1).Kentucky – Yes, only a registered mark or an applied-for mark may be assigned. KRS 365.583(1).This means that the USPTO and the Kentucky Secretary of State will not accept assignments of common law marks, and that mark holder must at least apply for registration before attempting an assignment.
- May the rights secured through an Intent to Use application be filed?
- Intent to Use applications may only be filed “to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” 15 USC 1060(a)(1).If an assignment to any other party is sought, the original filer of the Intent to Use application must first place the mark in commerce and then file an Allegation of Use (a Statement of Use or an Amendment to Allege Use).
- How do I transfer trademark rights to an individual/business entity which recently changed its name from that of the previous trademark holder?
- If an individual or business entity has changed its name but retains the same rights in and to a mark, it may file an assignment in the same was as if it were a separate individual or business entity being assigned those rights.
- How does an assignment affect the mark’s registration period?
- An assignment does not extend the mark’s registration period. The assignee will be expected to renew the mark within the 6-month period prior to the mark’s expiration. Failure to renew will cause the registration to expire. KRS 365.581. The same is true under federal law.
Legal Services Offered and Cost
Federal Trademark Assignment
Legal fees: $300 flat fee
This includes:
- Review of client’s information to ensure legal requirements are fulfilled
- Answer client questions, make corrections, and obtain additional information as needed
- Completion of Federal Trademark Assignment form to make the assignment, if necessary
- Completion of Trademark Assignment Recordation Coversheet
- Submission of the Assignment form or existing legal document, Coversheet, and filing fee with the USPTO
- Email confirmation of trademark assignment by the USPTO with official USPTO Notice of Recordation
If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.
Kentucky Trademark Assignment
Legal fees: $300 flat fee
This includes:
- Review of client’s information to ensure legal requirements are fulfilled
- Answer client questions, make corrections, and obtain additional information as needed
- Completion of Kentucky Trademark/Servicemark Assignment form
- Submission of form and filing fee with the Kentucky Secretary of State
- All postage and mailing charges
- Provide the new Certificate of Registration in the name of the assignee from the Kentucky Secretary of State
If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.