Trademark Assignment (Transfer Ownership of a Trademark)

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:

  1. 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.
  2. 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.
  3. A recorded assignment is valid against a subsequent purchaser for valuable consideration without notice. 15 USC 1060(a)(4) and KRS 365.583(1).
  4. 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

Legal Services Offered and Cost

Federal Trademark Assignment
Legal fees: $200 flat fee
Filing fees and other costs: $40 for the first mark in a single document. 37 CFR 2.6(b)(6). $25 for each subsequent mark in the same document. 37 CFR 2.6(b)(6).
This includes:

  1. Review of client’s information to ensure legal requirements are fulfilled
  2. Answer client questions, make corrections, and obtain additional information as needed
  3. Completion of Federal Trademark Assignment form to make the assignment, if necessary
  4. Completion of Trademark Assignment Recordation Coversheet
  5. Submission of the Assignment form or existing legal document, Coversheet, and filing fee with the USPTO
  6. 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: $100 flat fee
Filing fees and other costs: $5. KRS 365.583(1)

This includes:

  1. Review of client’s information to ensure legal requirements are fulfilled
  2. Answer client questions, make corrections, and obtain additional information as needed
  3. Completion of Kentucky Trademark/Servicemark Assignment form
  4. Submission of form and filing fee with the Kentucky Secretary of State
  5. All postage and mailing charges
  6. 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.