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

[Dale Quisenberry]

Thanks Carl.

My concern with that approach is, to use your acronym TYFNIL, the true facts come to light, the registration is invalidated, the client loses the benefit of the filing date, the client is left with common law rights only, and the competitor / opposing party in the litigation, who most likely has at least a pending application on file, will step in front of the client and lock the client into its area of common law rights (and zone of natural expansion), and the competitor will have trademark rights throughout the remainder of the US.

Thougths?

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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From: Carl Oppedahl <carl at oppedahl.com>
Date: Friday, 20 June 2025 at 9:46 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Assignment of ITU application -- exception

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>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.




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