[E-trademarks] Assignment of ITU application -- exception

[Carl Oppedahl]

At the risk of oversimplifying and maybe not fairly characterizing your 
question ...

You seem to be wondering if sometimes the filer (say XYZ Inc) might not 
really have much to convey in an assignment to the successor (XYZ LLC).  
And if there is not much to convey (perhaps very close to nothing) then 
can we be sure that the requirements of 15 USC 1060(a)(1) are satisfied?

Over the years I have handled the occasional case where the filer signs 
an assignment that assigns stuff over to the successor ... and it is 
basically a quitclaim deed.  The filer is not representing and 
warranting the amount of goodwill being conveyed, and is not 
representing and warranting the amount of stuff that constitutes the 
"business of the applicant, or portion thereof, to which the mark 
pertains". But whatever there is, it is being conveyed.  A quitclaim.

And I have figured this ought to be enough to satisfy 15 USC 
1060(a)(1).  The exception I suppose being some extreme fact pattern 
where the filer has very actively told the world it is not doing 
anything at all, or has previously engaged in some conduct or another 
that is entirely inconsistent with any nonzero amount of goodwill or 
business or trademark rights having ever existed.

On 6/20/2025 8:25 AM, Dale Quisenberry via E-trademarks wrote:
>
> Listmates,
>
> Client filed ITU application in name of XYZ, Inc. (a foreign corporation)
>
> Mark has not been used yet.
>
> Client has now formed XYZ, LLC (a US based LLC).
>
> Client wants to know if it can assign the ITU application from the 
> Inc. to the LLC.
>
> The starting point is no, but I’m exploring the exception in 15 USC 
> 1060(a)(1):
>
> *(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 1051(b) of this title 
> <https://www.law.cornell.edu/uscode/text/15/1051#b> shall be 
> assignable prior to the filing of an amendment under section 1051(c) 
> of this title <https://www.law.cornell.edu/uscode/text/15/1051#c> to 
> bring the application into conformity with section 1051(a) of this 
> title <https://www.law.cornell.edu/uscode/text/15/1051#a> or the 
> filing of the verified statement of use under section 1051(d) of this 
> title <https://www.law.cornell.edu/uscode/text/15/1051#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.
>
> So, at the moment, the LLC does not appear to be a “successor to the 
> business of the [Inc.], or a portion thereof, to which the mark, if 
> that business is ongoing and existing.”  Inc. has not started a 
> business that uses the mark yet.
>
> So I’m wondering which entity should use the mark first.
>
> I believe the LLC is the entity that will be operating the business 
> that uses the mark.
>
> So one option is to put a license agreement in place between the Inc. 
> and the LLC so that the use by the LLC is for the benefit of the Inc.
>
> Does that open up any resulting registration to attack that the Inc. 
> did not have bona fide intent to use?
>
> If so is the only way to navigate this to have the Inc. use the mark, 
> then file the statement of use, then assign the mark and goodwill to 
> the LLC?
>
> Has anyone been down this road before?
>
> Dale
>
> C. Dale Quisenberry
>
> Quisenberry Law PLLC
>
> 13910 Champion Forest Drive, Suite 203
>
> Houston, Texas 77069
>
> (832) 680.5000 (office)
>
> (832) 680.1000 (mobile)
>
> (832) 680.5555 (facsimile)
>
> www.quisenberrylaw.com <http://www.quisenberrylaw.com>
>
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