Last updated August 30, 2023
What is a Trademark Assignment?
A Trademark Assignment is a document that transfers the ownership of a trademark from one party to another. It moves the rights and interest of the trademark from the owner to the recipient.
A Trademark Assignment is also known as a:
- Trademark assignment agreement
- Trademark transfer agreement
- Assignment of trademark
Important terms
Some terms that are important to know:
- The assignor owns the trademark and is transferring it. They can be a person or organization.
- The assignee is the recipient of the trademark. This can be a person or an organization.
- A trademark is a form of intellectual property. It is a mark used to identify or distinguish goods or services. The mark can be a word, a phrase, a design, or a symbol.
When should I use a Trademark Assignment?
Use a Trademark Assignment when you’re looking to transfer your ownership of a trademark to someone else. A Trademark Assignment can transfer both registered and unregistered trademarks.
You can use a Trademark Assignment in any of the following situations:
- If you’re selling the trademark, you can transfer the ownership of the mark to the buyer.
- After a business sale, you can sell or transfer the trademark of your business to the new owners.
- If you have started a new business, you can use a Trademark Assignment to transfer a trademark from your old business to the new one.
- You can transfer a trademark to someone without payment in return, as a gift or consideration.
If you’re looking to assign a trade name, use an Assignment of Trade Name. If you need to assign a contract, personal property, or a different form of intellectual property, use a general Assignment.
What’s the difference between a Trademark License and a Trademark Assignment?
Where licensing permits the use of a trademark, an Assignment transfers the ownership entirely. A license means that you are still the owner of your trademark, with all the rights attached, and you’re simply letting someone else use your trademark temporarily. An Assignment is a permanent solution that transfers all the rights of ownership to someone else.
Do I need to register a Trademark Assignment?
If you’re assigning a registered trademark, you should register the transfer of ownership with the Canadian Intellectual Property Office (CIPO).
If your mark is unregistered, you don’t have to register the transfer. However, the Assignee should consider if they want to register the trademark for future brand protection.
An unregistered trademark can still be protected by common law, but registering a trademark will offer exclusive rights that can help protect the brand.
What are the representations and warranties in a Trademark Assignment?
A Trademark Assignment often contains a section of representations and warranties.
A representation means a statement of fact, while a warranty means a guarantee. The representations and warranties section contains facts that the assignor guarantees are true.
When creating a Trademark Assignment, you can choose which ones of the following representations and warranties to include. If you choose to include any representations and warranties it means that you guarantee these are factual statements at the time of signing.
| Representation and warranties |
Meaning |
| The assignor owns the mark. |
The assignor guarantees that the trademark is truly theirs to sell or transfer. |
| The mark is free of all security interests. |
A security interest is interest in property given to a third party to ensure payment of a debt from the owner of the property. If the owner fails to pay, the third party can claim ownership over part or all of the property.
The assignor guarantees that there are no third parties that can claim ownership over the trademark due to previous agreements. |
| The assignor has not granted any licenses to use the mark. |
The assignor guarantees that there are no other licenses for the trademark, meaning the assignee will be the only one with the right to use the trademark. |
| The assignor is not aware of any competing claims for the mark. |
The assignor guarantees that they don’t know of any other competing claims of ownership.
This doesn’t mean there are no competing claims, just that the assignor is currently not aware of any. |
How do I make a Trademark Assignment?
Follow these steps to create your Trademark Assignment:
-
Give details on all parties
Include information on the assignor and the assignee. You will need to include full names and addresses for all parties. You can add multiple assignors and assignees.
-
Include information on the trademark
Describe the trademark that is being transferred. You will need to:
- Describe the mark. If it is a word or phrase, spell it out as it’s used. If it’s a design or symbol, include a picture.
- Include the registration number, if the mark is registered. If the mark is not registered, name the geographical area it has been used in.
-
Set the price
Name the price of the mark and when it will be paid.
-
Include representations and warranties
Choose which representations and warranties to include. Choose only the ones you can guarantee are factual at the time of signing.
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Date and sign
Set a date to sign the Trademark Assignment. Both parties should date and sign the document.
Does a Trademark Assignment need to be notarized in Canada?
Notarizing a Trademark Assignment can be beneficial because a notary public can verify the identities and signatures of everyone involved. A notary can also confirm that each party is signing the agreement voluntarily and that everyone understands the content of the agreement, which can help avoid future disputes.
It’s not compulsory to have a Trademark Assignment notarized, but it could be valuable, since a notary seal adds a layer of protection and credibility to the document.
