Trademark Assignment FAQ - United States
From LawDepot Law Library
A Trademark Assignment (sometimes known as an Assignment of Trademark) transfers the ownership of a trademark from one party to another.
What is a Warranty?
Generally, a warranty is an assurance made by one party to a second party that certain facts or conditions are true or will happen. The second party can rely on the assurance and seek some type of remedy if the assurance is not true or followed.
Who is the Assignor?
The assignor is the person, company, or organization that currently owns the trademark and wishes to sell it.
Who is the Assignee?
The assignee is the person, company, or organization that is purchasing the trademark.
What is the difference between a trademark and a service mark?
The only difference between a trademark and a service mark is that a trademark is used to distinguish goods (Coca-Cola beverages, Ford vehicles, etc.), whereas a service mark is used to distinguish services (Jiffy Lube oil changes, Furnco furnace installation, etc.)
Representations and Warranties
What do the different representations and warranties mean?
With LawDepot’s Trademark Assignment, you can choose to include various representations and warranties that apply to the trademark that is being transferred. These representations and warranties are as follows:
The Assignor owns the mark
Selecting this option will insert a clause into your completed Trademark Assignment that states that the Assignor guarantees that he, she, or it owns the trademark and thus has the ability to assign it.
The mark is free of all security interests
A security interest is an interest in personal property that is given by the owner of the property to a third party to secure the payment of an obligation owed by the owner of the property. The holder of the security interest can obtain the secured property in the event of a default by the owner of the property.
If the Seller has offered a security interest on the trademark to a third party and the Seller defaults on an obligation to the third party, the third party may have a claim on the ownership of the trademark.
By guaranteeing that the trademark is free of all security interests, the Assignor is guaranteeing to the Assignee that a third party will not be able to claim ownership of the trademark, even if the Assignor defaults on its obligations to a third party.
The Assignor has not granted any licenses to use the mark
Selecting this option will insert a clause into your completed Trademark Assignment that warranties that no other person, company, or organization has been granted a license to use the trademark in question. This guarantee will assure that the trademark being assigned will be for the exclusive use of the Assignee, and that no other person or organization has the right to use the trademark.
The Assignor is not aware of any competing claims for the mark
Selecting this option will insert a clause into your completed Trademark Assignment that states that the Assignor does not know of any competing claims for ownership of the mark. Please keep in mind that with this option the Assignor does not state that there are no competing claims for ownership of the trademark; the Assignor only states that the Assignor is not aware of any competing claims.
What types of trademarks can be assigned with LawDepot’s Trademark Assignment?
You can assign both trademarks and service marks with LawDepot’s Trademark Assignment. The trademark or service mark may be a word, phrase, design or symbol, and it may be registered or unregistered.
What do I list for “Price of the Assignment” if the trademark is being transferred for free?
If you are giving away the rights to a trademark, as opposed to selling them, you can still use the LawDepot’s Trademark Assignment. To do so, simply list $10.00 as the “Price of the Assignment”.
What if I am unsure of the date that the agreement will be signed?
If you are unsure of the date that the agreement will be signed, there are two options. You can select “This Month” if you are certain that the agreement will be signed this month, but you are unsure of the exact day. Or you can select “Unsure” if you do not know which month the agreement will be signed in and a blank line will be inserted in your final document for you to write in the date later.
What is a Notary Public?
A notary public is a state-appointed official who is authorized to authenticate the signing of a legal document by verifying the identity of the persons that sign the document.