Trademark Assignment Law and Legal Definition

Trademark assignment is the transfer of ownership of a trademark application or trademark registration from one entity to another. The transferring party called the assignor; transfers to the receiving party called the assignee its property rights in the trademark. The U.S. Patent and Trademark Office (USPTO) recommend recording assignments with the USPTO Assignment Services Division to maintain clear title to pending trademark applications and registrations.

An assignment is very different from a license. License is the grant of mere permission to use a mark in some limited manner. When a license is granted there is no transfer of property rights in the trademark.

The essentials of a valid assignment is that the assignment must:

  • be given for consideration, or else made under seal
  • clearly identify the marks
  • clearly identify the assignor and assignee
  • clearly indicate that goodwill is included

A trademark assignment can be proven by oral evidence. However, a written assignment is preferred to an oral assignment. However, there must be evidence of an intention on the part of the assignor to transfer ownership of the mark and the associated goodwill to the assignee to make a valid assignment.