Trade Mark Assignments – Your Top Questions Answered

Posted by David Cammack on 10th March 2020

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A deed of assignment of a trade mark is useful to transfer any trade mark. This blog article tackles the most common queries from the Internet about Trade Mark Assignments.

1. Can a trade mark be transferred?

The short answer is, “Yes”. You can transfer it using an assignment document in writing. It does not matter whether this is done for a payment or as a gift.

2. When would you need a trade mark assignment?

If you want to sell or transfer trade marks from one party to another, then you would need a trade mark assignment. It makes no difference if the trade marks are registered or unregistered. You can transfer either or both types of trade mark in just one assignment. For registered marks, additionally you would need to update the record at the Registry.

3. What should I include in a trade mark assignment?

All trade mark assignments should cover at least the following issues:

  • Clearly identify the trade marks you are assigning;
  • State what payment is due for the trade marks, if any; and
  • A law and jurisdiction clause – state where you will resolve disputes and which state’s laws will apply

4. What is a trade mark assignment?

A trade mark assignment, or deed of assignment of a trade mark, is a document to assign, transfer or sell one or more trade marks from one owner (i.e. the “assignor”) to another party (i.e. the “assignee”).

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5. Does a trade mark assignment have to be in writing?

Yes, you should always have your trade mark assignment in writing. This prevents arguments and uncertainties later, because you will be clear on what the position was.

6. What do the symbols TM and ® mean?

“TM” means an unregistered trade mark. “®” means a registered trade mark. It is useful to use them whenever you use your trade mark to show to people that you regard the word or phrase as your trade mark – claiming ownership of it. However, it is an offence to use ® when you only have an unregistered trade mark, so take care over that.

7. What should you do if you need an assignment?

If ever you need to use a trade mark assignment, then with Legalo’s Trade Mark Assignment template you can make your document quickly and simply.

After you have written and signed your assignment of a UK registered trade mark, then you need to register the transfer with the UK Intellectual Property Office. For this, you use their Form TM16 to update the Trademarks Register with the new owner’s details.

If the above answers do not cover your question about trade mark assignments, then just get in touch and we’ll try to help.