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

[Sam Castree]

I've been in somewhat similar situations before, and I fully endorse
everything that Susan said.  I've never seen a problem arise when taking
the steps that she's outlined.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Fri, Jun 20, 2025 at 10:01 AM Crane, Susan via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Dale,
>
>
>
> I see no significant risk in the foreign corporation licensing its US LLC
> from a registration perspective.  A business is entitled to decide it wants
> to own a mark  in the US, and subsequently form a US entity to market the
> product or service.  The fact that it solely holds the license does not
> prove lack of bona fide intent and more than a US holding company filing
> for marks and then licensing a US sub would.
>
>
>
> That being said, if the US LLC will be paying royalties to the foreign
> Inc., there are various tax considerations that will come into play.
>
>
>
> If the end goal is to have the US LLC own the mark, than your second
> scenario is also plausible – use under license, SOU filed, then mark
> assigned.  And much less risky than an assignment now that potentially
> could be challenged as an invalid transfer of an ITU.
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O* (973) 753-6455
>
> *M* (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Dale Quisenberry via E-trademarks
> *Sent:* Friday, June 20, 2025 10:25 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Dale Quisenberry <dale at quisenberrylaw.com>
> *Subject:* [E-trademarks] Assignment of ITU application -- exception
>
>
>
> 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
>
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> 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://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*b__;Iw!!Nf401RNTQFE14GfWW3o!kXhFJ1aThj6rz61B_-h67sYyOy3if9fvkOF27u6oNVBs414gV-huwbIvlvuzuTp2csQZVOWJc6nUCyrw9XFXnEAvSuMYJ1M$> shall
> be assignable prior to the filing of an amendment under section 1051(c)
> of this title
> <https://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*c__;Iw!!Nf401RNTQFE14GfWW3o!kXhFJ1aThj6rz61B_-h67sYyOy3if9fvkOF27u6oNVBs414gV-huwbIvlvuzuTp2csQZVOWJc6nUCyrw9XFXnEAvUavgsHQ$> to
> bring the application into conformity with section 1051(a) of this title
> <https://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*a__;Iw!!Nf401RNTQFE14GfWW3o!kXhFJ1aThj6rz61B_-h67sYyOy3if9fvkOF27u6oNVBs414gV-huwbIvlvuzuTp2csQZVOWJc6nUCyrw9XFXnEAvXfh-Yx4$> or
> the filing of the verified statement of use under section 1051(d) of this
> title
> <https://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*d__;Iw!!Nf401RNTQFE14GfWW3o!kXhFJ1aThj6rz61B_-h67sYyOy3if9fvkOF27u6oNVBs414gV-huwbIvlvuzuTp2csQZVOWJc6nUCyrw9XFXnEAvh83zxao$>,
> 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
> <https://urldefense.com/v3/__http:/www.quisenberrylaw.com__;!!Nf401RNTQFE14GfWW3o!kXhFJ1aThj6rz61B_-h67sYyOy3if9fvkOF27u6oNVBs414gV-huwbIvlvuzuTp2csQZVOWJc6nUCyrw9XFXnEAvX0XiPLQ$>
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