Trademark Assignments

Not Just Patents Legal Services performs assignments of marks for clients for the same cost or less than a statement of use (including the filing fee). Please call and ask for a quote at 1-651-500-7590. Please note that intent-to-use applications under Section 1(b) have restrictions on assignments under TMEP 501.


TMEP 501 Assignment of Marks

501.01 Assignability of Marks in Applications and Registrations

15 U.S.C. §1060(a)

(1) A registered mark or a mark for which an application to register has been filed shall be assignable with the

good will of the business in which the mark is used, or with that part of the good will of the business connected with

the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark

under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application

into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment

to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing

and existing.

(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business

connected with the use of and symbolized by any other mark used in the business or by the name or style under which

the business is conducted.

(3) Assignments shall be by instruments in writing duly executed…

37 CFR §3.1 (Extract)

*** Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application,

registered mark or a mark for which an application to register has been filed.


501.01(a) Assignability of Intent-to-Use Applications

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application

before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a

statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or portion of the business

to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060;

37 C.F.R. §3.16.

The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or

goodwill, and to prevent “trafficking” in marks.

As a general rule, the United States Patent and Trademark Office (“USPTO”) does not investigate or evaluate the

validity of assignments. Therefore, the examining attorney should issue an inquiry concerning the compliance of an

assignment with the cited provisions of §10 only if:

(1) The application itself includes a statement indicating that the assignee is not a successor to the original

applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or

(2) All of the following conditions are present:(a) The assignment is executed before the filing of an allegation

of use;

(b) The applicant submits the assignment document for inclusion in the application record; and

(c) The assignment document fails to include the relevant language from §10 to the effect that the assignment

includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

The examining attorney should not require the submission of assignment documents to determine compliance.

If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the

cited provision of §10 is sufficient to resolve the issue. This statement may be entered through an examiner’s amendment.

The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before

filing an allegation of use renders the application and any resulting registration void. Clorox Co. v. Chemical Bank,

40 USPQ2d 1098 (TTAB 1996).

Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


224StatementOfUse.com

Tie It Up

Securing the Right IP


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


$224 Includes USPTO filing fee one class

Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us