How to Transfer a Trademark

By Larissa Bodniowycz, J.D.

How to Transfer a Trademark

By Larissa Bodniowycz, J.D.

A trademark is a mark, symbol, or design that identifies the source of goods or service. McDonald's golden arches and Google's multicolored nameplate are two of the world's most recognizable examples of these designs. These symbols are considered intangible property and are often one of a business' most valuable assets.

Woman wearing glasses and red lipstick reading paperwork

The ownership of your work can pass from one entity or person to another. The following are the basic steps for making this transaction happen.

1. Identify the parties.

The first step in handing over a trademark is to identify who will sell it and who will receive it. This sounds simple, but it is an area where mistakes can happen.

You need to determine who owns the design. These designs can have multiple owners, and all owners must be parties to the transaction. Both businesses or individuals can be owners of these designs. If a design carries a federal registration, the U.S. Patent and Trademark Office (USPTO) generally has the most up-to-date information on who owns it.

You also need to ensure that it is clear that each party is entering into the agreement in their individual or personal capacities. Take the following example:

Eve's Apples, a California corporation, has decided to go out of business. Eve's Apples has agreed with Adam Smith that it will sell the logo for its apple farm, a trademark, to Smith. Smith is the sole owner of Adam's Apples, a California limited liability company (LLC) that operates a separate apple farm. Before transferring the logo, the parties must clarify whether Eve's Apples will sell the logo to Adam Smith as an individual, or to Adam's Apples, the LLC. Either is permissible, but the decision must be clear.

2. Draft and sign the transfer agreement.

After identifying the parties and agreeing to the key terms, the parties can draft and sign an agreement that transfers ownership of the mark. The agreement should, at a minimum, include provisions regarding:

  • The identification
  • The current owner's intent to hand over the mark in its entirety
  • Representation that the current owner holds all the rights to the design
  • The price for the mark
  • The effective date of the transfer
  • Assignment of the goodwill associated with the design to the new owner
  • The impact of the agreement on any prior agreements between the parties, such as licensing agreements

3. Record the process.

To avoid future confusion or disputes, you should record the transaction with the office where the mark is registered, usually the USPTO or the trademark office for the state where the owner operates. This updates the public, official record of who owns the mark.

The process of recording the transaction usually only requires the completion of a simple form and submission of a small fee. The USPTO allows you to complete the process electronically on its website. However, trademarks are not always a straightforward area of law, and things get even trickier when ownership of the mark changes. A trademark attorney can help ensure your intended transfer goes smoothly and is legally enforceable.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.