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

Fri Jun 20 15:40:24 UTC 2025

How many times have those applications been relied on in an adversarial 
action?

There will never be a problem when you do the assignment, the PTO 
doesn't care that you are assigning and ITU and inquire any further. The 
problem is that it will be an attack on the validity of the registration 
when you assert it, possibly years later.

Pam

Pamela S. Chestek
Chestek Legal
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On 6/20/2025 8:35 AM, Sam Castree via E-trademarks wrote:
> 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 <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 10:25 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
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