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

[Pamela Chestek]

Either way you go there will be a basis for a collateral attack -- 
either that it was an improper assignment or that the original company 
(which is likely an empty shell at the time that use began) didn't 
control the quality of the goods and services of the ultimately produced 
product. It would be cheaper and create less vulnerability to just file 
a new application, but whether that's the better option will depend on 
how valuable the priority is -- how long it has been pending, how unique 
the mark is, and how many later filers of similar marks there are. And 
you could file a new application too, as a safety net.

Pam

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
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El Dorado Hills, CA 95762
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www.chesteklegal.com

On 6/20/2025 8:00 AM, Crane, Susan via E-trademarks wrote:
>
> Exactly why I would license, use, file SOU, assign.
>
> *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 <mailto: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 10:54 AM
> *To:* Carl Oppedahl <carl at oppedahl.com>; 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:* Re: [E-trademarks] Assignment of ITU application -- exception
>
> 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
>
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> 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 
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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://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*b__;Iw!!Nf401RNTQFE14GfWW3o!iyqbusVlZNXV0z4mlxFZwsbysNAHTGQ0XbyPzfFEZB5DG2MEjAnm0PYaXGXjM3ieBOq4PR9RwPat3yg5oqq8L10jnXS64QA$> shall
>     be assignable prior to the filing of an amendment under section
>     1051(c) of this title
>     <https://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*c__;Iw!!Nf401RNTQFE14GfWW3o!iyqbusVlZNXV0z4mlxFZwsbysNAHTGQ0XbyPzfFEZB5DG2MEjAnm0PYaXGXjM3ieBOq4PR9RwPat3yg5oqq8L10jEpK-1js$> 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!iyqbusVlZNXV0z4mlxFZwsbysNAHTGQ0XbyPzfFEZB5DG2MEjAnm0PYaXGXjM3ieBOq4PR9RwPat3yg5oqq8L10jyMCu9Uw$> or
>     the filing of the verified statement of use under section 1051(d)
>     of this title
>     <https://urldefense.com/v3/__https:/www.law.cornell.edu/uscode/text/15/1051*d__;Iw!!Nf401RNTQFE14GfWW3o!iyqbusVlZNXV0z4mlxFZwsbysNAHTGQ0XbyPzfFEZB5DG2MEjAnm0PYaXGXjM3ieBOq4PR9RwPat3yg5oqq8L10jK3VnHM4$>,
>     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
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