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).

$224 Includes USPTO filing fee one class

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PO Box 18716

Minneapolis, MN 55418


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

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