Assigning or Transferring Your Trademark

Step-by-Step Guide to Trademark Ownership Transfers and Legal Filing

After you build a name for your business, your trademark becomes more than a legal asset. It reflects your reputation. When the time comes to transfer that trademark, whether you're selling your business, merging, or handing it off to a new entity, the process can feel overwhelming. You’re moving trust, recognition, and value.

At Horn Wright, LLP, our trademark attorneys understand how much your brand means to you. We’ve helped business owners across New York State successfully assign or transfer trademark rights without losing sleep or risking their legal standing. If you're looking to shift trademark ownership, we can guide you step by step while protecting your long-term interests.

Understand What a Trademark Assignment Means

A trademark assignment means the full legal transfer of trademark ownership from one party to another. Unlike licensing, where you let someone use the mark under conditions, an assignment gives up all rights permanently. In New York State, this means the recipient (or assignee) takes full control. They can use, enforce, or even sell the trademark later.

If you’ve registered your trademark federally with the USPTO, you still must follow the proper channels to record the assignment. If you’ve only registered it in New York, you’ll need to update your records with the New York Department of State.

In either case, make sure you're transferring ownership along with the business or services tied to the mark. Otherwise, the assignment might be challenged or ruled invalid.

Know When You Should Transfer a Trademark

Transferring a trademark happens during big moments in business. You might be handing over operations, closing a deal, or launching a fresh brand identity. All of these situations call for formal, clean transfers of trademark rights.

Here are a few situations that usually require assignment:

• Selling your business to a new owner
• Merging with another company
• Transferring assets to a family member or successor
• Moving the brand to a new business structure (LLC, corporation, etc.)
• Rebranding and handing off the old mark

In New York, where brand identity plays a big role in everything from fashion to finance, keeping ownership records accurate matters. Don’t delay the paperwork. If someone else starts using your trademark without legal ownership, your brand could lose value fast.

Identify Who Can Legally Assign the Trademark

Only the legal trademark owner can make the assignment. That may sound simple, but it often gets messy, especially if the trademark belongs to a company with multiple stakeholders.

In New York State, a trademark owner could be:

• An individual sole proprietor
• A limited liability company (LLC)
• A corporation or partnership
• A dissolved entity (with proper legal steps)

If a business has closed but the trademark still holds value, it may still be transferable through legal channels. Just make sure that person or entity has the authority to sign the agreement. A mistaken transfer signed by the wrong party could later be disputed in court.

Prepare a Valid Trademark Assignment Agreement

A trademark transfer isn’t valid without a signed agreement. This legal contract spells out the details of the assignment and protects both parties. It needs to be detailed, clear, and enforceable under New York State contract laws.

Your assignment agreement should include:

• Full legal names and contact details of both parties
• A clear description of the trademark being transferred
• The effective date of transfer
• Any payment or compensation involved
• A statement that goodwill is included in the transfer

In New York, contracts can be challenged if they're vague or incomplete. Don’t risk your rights with a generic template. Work with a legal professional who understands local laws and how the courts interpret assignment language.

Record the Assignment with the USPTO

If your trademark is federally registered, the assignment must be recorded with the United States Patent and Trademark Office. This step makes the transfer official and public. It also prevents confusion if someone challenges your right to the mark.

Here’s what you’ll need:

• A signed assignment agreement
• A completed Recordation Form Cover Sheet
• A $40 per mark filing fee (as of current rates)

The USPTO doesn’t automatically validate the legal strength of your agreement, they just record it. That means if there’s an error, it may not show up until later. Local business disputes erupt because trademark assignments weren’t properly recorded.

Update New York State Trademark Records

If you registered your trademark with the New York Department of State, you’ll need to update your records there as well. State-level registration is optional but common among small and midsize businesses operating primarily in New York.

You’ll need to:

• Submit a notarized assignment form
• Include a copy of the signed agreement
• Pay the applicable filing fee

You can file by mail or visit the Department’s Albany office. You can also access forms online through the Department of State’s Division of Corporations. Keeping these state records updated ensures your business stays protected under local laws.

Ensure Goodwill Transfers with the Mark

When you assign a trademark, you must also transfer the goodwill tied to it. Goodwill includes the public trust, recognition, and reputation the brand has earned.

In New York State, if a trademark is transferred without its associated goodwill, the assignment may be considered a "naked transfer" and that can invalidate the mark. Courts may see the transfer as misleading to the public.

Goodwill keeps the brand’s identity intact. Without it, a trademark is just a name.

Avoid Assignment Mistakes That Invalidate Rights

Even small errors in a trademark transfer can trigger legal problems. Many business owners assume that a signature and handshake are enough. In New York’s competitive economy, that’s a risky move.

Watch out for these mistakes:

• Forgetting to document the full assignment in writing
• Assigning only the trademark without goodwill
• Transferring the mark but keeping it registered in the old owner’s name
• Failing to notify the USPTO or the NY Department of State
• Using a template that doesn't comply with local legal standards

New York courts pay close attention to whether a transfer reflects a real business change. If something feels off, the court may invalidate the assignment altogether.

Notify Licensees or Business Partners

If others have rights to use your trademark through licensing or distribution agreements, you’ll need to notify them of the ownership change. This is a legal necessity.

Under New York law, licensees must operate under accurate branding authority. If they promote a product or service using a mark owned by someone else without consent, they could face trademark infringement claims, even unintentionally.

Let your partners know:

• When the ownership will officially transfer
• Who the new owner is
• Whether current agreements will remain valid

That level of transparency protects everyone involved and keeps business running smoothly.

Understand Tax and Valuation Impacts in New York

A trademark has financial value. When you transfer it, you might trigger tax consequences depending on the details. New York State views intellectual property as a business asset, and transfers can affect your tax filings.

If money changed hands in the assignment, that might be considered a capital gain. If you’re gifting the trademark, you may need to report its estimated fair market value. In either case, talk to a New York-based tax advisor before finalizing anything.

Trademarks may also factor into business valuations during sales or mergers. If your brand has recognition in cities like Syracuse or Buffalo, that equity can shift the final numbers in a deal.

Work with a New York Trademark Attorney

The trademark assignment process involves contracts, filings, state laws, and federal regulations. It’s not something you want to patch together through online searches. Each step has its risks. Each missed detail has consequences.

An experienced trademark attorney can:

• Draft assignment agreements tailored to New York laws
• File forms with the USPTO and NY Department of State
• Advise on tax, licensing, and business transfer issues
• Help resolve disputes before they escalate

Especially if your trademark plays a central role in your business’s identity, legal guidance ensures the transfer holds up in court and keeps your reputation safe. You can contact our team directly for support.

Transfer Your Trademark With Confidence in New York

Assigning your trademark means protecting the brand you’ve worked hard to build. At Horn Wright, LLP, our New York trademark attorneys handle every detail of the transfer process, drafting agreements, filing with state and federal agencies, and advising you on each legal step. If you’re ready to transfer your trademark, we’re here to take that stress off your shoulders and help you move forward with confidence.