TRADEMARK ASSIGNMENT AGREEMENT
State of ________
This Trademark Assignment Agreement (this “Assignment”), made and entered into effective as of ________ (the “Effective Date”), is made by and between the following parties:
________, a ________ (the “Assignor”), having an address as follows:
________
and ________, a ________ (the “Assignee”), having an address as follows:
________
The Assignor and the Assignee are sometimes referred to herein individually as a “Party” and collectively as the “Parties.”
RECITALS
WHEREAS, the Assignor is the owner of all right, title, and interest in and to the trademark(s), service mark(s), trade name(s), and/or trade dress identified below (collectively, the “Mark”), together with the goodwill of the business symbolized thereby;
Mark (word/design): ________
Goods/Services covered: ________
USPTO Serial No. (if applicable): ________
USPTO Registration No.: ________
Registration Date: ________;
WHEREAS, the Mark is registered with, or pending registration before, the United States Patent and Trademark Office (the “USPTO”), and may be the subject of registrations or applications in one or more foreign jurisdictions;
WHEREAS, the Assignor has used the Mark in commerce in connection with the goods and/or services identified above, and the goodwill of the business associated with the Mark is being transferred together with the Mark, as required under Section 10 of the Lanham Act, 15 U.S.C. § 1060;
WHEREAS, the Assignee desires to acquire all right, title, and interest in and to the Mark, together with the associated goodwill, and any registrations or applications therefor in the United States and any foreign jurisdictions;
NOW, THEREFORE, in consideration of the mutual promises and covenants contained herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereby agree as follows:
Article 1: ASSIGNMENT.
1.1 The Assignor hereby irrevocably sells, assigns, transfers, conveys, and delivers to the Assignee, its successors and assigns, the whole and entire right, title, and interest in and to the Mark, including without limitation: (a) all registrations and applications for the Mark in the United States and in any and all foreign jurisdictions; (b) all common law rights in the Mark; (c) the goodwill of the business symbolized by and associated with the Mark; (d) all rights to renew and extend such registrations; and (e) all rights to sue for, recover, and retain damages, profits, and other remedies for past, present, and future infringement, dilution, or other violation of the Mark.
1.2 In accordance with 15 U.S.C. § 1060(a)(1), the Mark is assigned together with the goodwill of the business in which the Mark is used and which is symbolized by the Mark, and not as a separate asset apart from such goodwill.
1.3 The Assignee shall be entitled to bring and prosecute any action for past, present, or future infringement, dilution, unfair competition, or other violation of the Mark, including infringement occurring prior to the Effective Date, and to retain any recovery therefrom.
1.4 The Assignor agrees to cease all use of the Mark and any confusingly similar mark as of the Effective Date, and shall not at any time challenge, contest, or impair the validity of, or the Assignee’s right, title, or interest in and to, the Mark.
Article 2: CONSIDERATION AND PAYMENT.
2.1 In full consideration for the assignment set forth herein, the Assignee agrees to pay the Assignor the sum of $________ (________).
2.2 Payment shall be made on or before ________ by the following method of payment: ________.
Article 3: REPRESENTATIONS AND WARRANTIES.
The Assignor represents and warrants that: (a) the Assignor is the sole and exclusive owner of all right, title, and interest in and to the Mark; (b) the Assignor has the full right, power, and authority to enter into this Assignment and to make the assignment contemplated herein; (c) the Mark is free and clear of all liens, security interests, encumbrances, licenses, and adverse claims, except as disclosed in writing to the Assignee; (d) the Assignor has not previously assigned, transferred, licensed, or otherwise encumbered the Mark; and (e) to the Assignor’s knowledge, the Mark does not infringe upon the rights of any third party, and there are no pending or threatened claims, actions, or proceedings relating to the Mark.
Article 4: COOPERATION AND FURTHER ASSURANCES.
The Assignor agrees to cooperate fully with the Assignee in perfecting, recording, and evidencing the assignment of the Mark. Such cooperation includes the prompt execution and delivery of any and all documents reasonably necessary, including oaths, declarations, specifications, powers of attorney, and any other instruments required to make good and complete the conveyance of the Mark, as well as reasonable assistance in any proceeding before the USPTO or the corresponding authority of any foreign jurisdiction. The Assignor hereby irrevocably appoints the Assignee as its attorney-in-fact, coupled with an interest, to execute and file any such documents on the Assignor’s behalf should the Assignor fail to do so within a reasonable time after request.
Article 5: RECORDATION.
5.1 The Parties agree that recordation of this Assignment with the USPTO Assignment Recordation Branch and any applicable foreign trademark authority shall be effected promptly following the Effective Date.
5.2 The following Party shall be responsible for causing such recordation and for paying all associated governmental fees: ________.
5.3 The Assignor authorizes the Assignee to complete recordation, and authorizes the USPTO, the Director thereof, and any other competent government official to record and register this Assignment.
Article 6: SUCCESSORS AND ASSIGNS.
The rights and obligations under this Assignment shall inure to the benefit of, and be binding upon, the Parties and their respective heirs, successors, legal representatives, and permitted assigns.
Article 7: SEVERABILITY.
In the event that any provision of this Assignment is found to be invalid, illegal, or unenforceable by a court of competent jurisdiction, such provision shall be severed from this Assignment, and the remaining provisions shall continue in full force and effect to the fullest extent permitted by law.
Article 8: AMENDMENT AND WAIVER.
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Article 9: ENTIRE AGREEMENT.
This Assignment constitutes the entire agreement between the Parties with respect to the subject matter hereof and supersedes any and all prior or contemporaneous understandings, agreements, representations, and negotiations, whether written or oral.
Article 10: HEADINGS.
Headings used in this Assignment are for convenience of reference only and shall not be construed to limit, define, or otherwise affect the terms or interpretation of this Assignment.
Article 11: COUNTERPARTS AND ELECTRONIC SIGNATURES.
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Article 12: GOVERNING LAW, JURISDICTION, AND VENUE.
This Assignment shall be governed by and construed in accordance with the laws of the United States of America and the laws of the State of ________, without regard to its conflict-of-laws principles. The Parties irrevocably consent and submit to the exclusive jurisdiction and venue of the state and federal courts located in ________, State of ________, for the resolution of any dispute arising out of or relating to this Assignment.
IN WITNESS WHEREOF, the Assignor and the Assignee have executed and delivered this Assignment as of the Effective Date.
ASSIGNOR:
________
By: ___________________________
Name: ________
Title: ________
Date: _______________________________
ASSIGNEE:
________
By: ___________________________
Name: ________
Title: ________
Date: _______________________________
ACKNOWLEDGMENT
State of ________
County of ________
On this ________, before me, the undersigned Notary Public in and for said State, personally appeared ________, who is personally known to me or proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument, and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity, and that by his/her/their signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.
WITNESS my hand and official seal.
Notary Public Signature: ___________________________
Printed Name: ________
My Commission Expires: ________
Seal: