Trademark Assignment Form

• In order for a trademark assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark which is basically the recognition that the trademark has with the public.

Otherwise, the transfer of ownership will be considered an assignment in gross, and all trademark rights could be lost forever.

• Although a trademark assignment doesn’t have to be in writing, it’s a very good idea for the assignment to take the form of a written and signed document so that questions of ownership don’t come up in the future.
  

• If the trademark being transferred is the subject of an existing federal trademark registration or pending trademark application, the trademark assignment must be in writing and needs to be recorded with the trademark office. This could be done electronically at the trademark office’s website. It is important to promptly record the trademark assignment so that the trademark office’s records remain accurate and so that the public is put on notice as to the rightful owner of the trademark.

Although a pending trademark application may be assigned prior to becoming a trademark registration, you can not assign an intent to use trademark application until the trademark itself is in use in commerce.

•  If an intent to use application is prematurely assigned, any resulting trademark registration will be considered void and subject to cancellation. It goes without saying that there are many pitfalls that must be avoided when assigning a trademark in order to ensure that the transfer of ownership is valid, legal, and binding.

Therefore, you may want to consider working with an experienced and knowledgeable trademark attorney so that you know everything has been done correctly.