Trademark Assignment

Our Trademark Assignment template is for use in drafting a trademark assignment agreement. The agreement transfers the rights in the trademark and you can use it to transfer both:

• registered trademarks; and
• unregistered trademarks.

If you want an agreement that clearly sets out what trademarks you are transferring and the rights and obligations of each party in a clear, concise way, then use our Trademark Assignment agreement template.

Drafted by an IP specialist solicitor, our template is easily edited to create a legally binding agreement that you can rely on.

We are confident our template will be right for you, but want to offer you peace of mind. If for any reason you are not happy with your purchase after downloading the template, then we offer a no-questions full money-back guarantee. Just contact us about it.

Using Our Trademark Assignment Template

Once you have bought it, you can download the template agreement in Microsoft Word format. You then edit the template by adding in the details that are specific to you. The areas that you need to edit in the agreement are shown with [square] brackets.

The template includes provision for situations where the trademark is being sold and for the situation where it is being transferred to the Assignee without any payment being made. The later may be relevant if you are assigning the trademark as part of a related transaction. For example, a business sale.

The download includes full guidance notes that take you through each clause in the agreement and explain exactly what you need to edit.

This is a relatively short and straightforward document and generally takes about 15 minutes to complete.

The completed trademark assignment agreement is then ready for you to save and sign.

Do You Need a Deed of Assignment?

You should make a transfer of any property in writing in order to clearly establish the basis of the transfer and to set out any requirements that relate to it. Strictly speaking, you do not need a written agreement to transfer a trademark.

It would be sufficient to record the transfer by submitting the TM16 From to the Intellectual Property Office. This form notifies the Intellectual Property Office of the transfer.

However, without a written transfer agreement the purchaser of the Trademark would not be able to take action against a third party who has been infringing the trade mark prior to the date that you transferred the trademark.

This is because you can only transfer this right by a written agreement. Our template trademark assignment agreement includes this right as part of the rights the Assignor is transferring to the Assignee.

What Warranties does the template include?

The agreement template includes a standard warranty (which is a contractual promise) that confirm that the Assignor is the owner of the trademark(s).

Sample Trademark Assignment

You can preview the trademark assignment by clicking on the ‘Preview’ button towards the top right of this page. The sample that is provided will give you a good indication of the layout of the agreement template and its contents.

Signing the Trademark Assignment Agreement

We have drafted the agreement in the form of a “Deed”. This means that to be legally binding the signatures of the parties must be witnessed by an independent witness.

In the trademark assignment template we have included a space for you to add the witnesses’s details and then a space for them to sign.

After Signing the Transfer Agreement

Once both parties have signed the agreement to transfer the trademark(s), then it needs to be registered with the UK Intellectual Property Office. Use Form TM16 to update the Trademarks Register with the new owner’s details and to record the transfer.

At the time of writing a fee of £50 is payable to the Intellectual Property Office when you submit the form and request that they record the details of the transfer.

When you send the Form TM16 to the IPO, either:

• both the Assignor and the Assignee must sign the form; or
• if sent by the Assignee and signed by just them, then a copy of the Deed of Assignment must also be sent with the form.

Does the Assignment Template Work Internationally?

The laws of England and Wales govern the trademark assignment template agreement. However, you can use it to transfer:

• UK trademarks; and
• European Community registered trademarks.

In the UK Scotland is its own legal jurisdiction. You can change the ‘Law and Jurisdiction’ clause in the template agreement to Scotland and Scottish law if preferred.

More intellectual property templates

We also have a trade mark licence template. If you need something other than trademark templates, then have a look at:

1. our specific templates for copyright issues; and
2. generic intellectual property templates for all other IP issues.