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Can A Trademark Applicant Assign An Intent-To-Use Application?

Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments , where important concepts such as the chain of title and recording an assignment are discussed. However, there are special rules for intent-to-use applications under §10 of the Trademark Act. The statute is referred to as the anti-trafficking provision of the Lanham Act, 15 U.S.C. §1060(a)(1) . It specifically states:

[N]o application to register a mark under section 1051(b) of this title shall be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, 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.

The policy behind the statute is to ban assignments of intent-to-use applications (prior to the filing of an Allegation of Use or Statement of Use), unless the application is assigned with the business associated with the mark. Assuming there is an ongoing and existing business, the assignee of the intent-to-use trademark application, must purchase the whole business (assets, business location if one exists, employees etc.) affiliated with the mark. If the assignment is held to be invalid, it will void the underlying application or registration under §10 of the Trademark Act. See Clorox Co. v. Chem. Bank , 40 USPQ2d 1098 (TTAB 1996).

The following factors will be considered when determining if the assignee is a successor to the business of the applicant, was there a transfer of the business and the good will of the trademark, is there continuity of management, is the assignee producing products or rendering services similar to the applicant, has there been a transfer of assets, and are there documents supporting these facts. The fact finder will look to determine if the assignment was part of a larger transaction between the applicant and the assignee. In the matter of Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc. , 108 USPQ2d 1134 (TTAB 2013) [precedential], this was part of the problem. An assignment was recorded with the Assignment Division of the United States Patent & Trademark Office (“USPTO”), but the assignment constituted the entire agreement between the parties, and was not part of a more significant transaction. In this case, the assignee was not the successor to the business of the applicant. In fact, the Assignor continued in the same business after the transfer, including producing and selling the same products branded with the mark that was the subject of the assignment.

See also, Railrunner N.A., Inc. v. New Mexico Department of Transportation and New Mexico Mid-Region Council of Governments , Opposition No. 91172851 (July17, 2008) [not precedential], where an opposition was filed with the Trademark Trial and Appeal Board (“TTAB” or “Board”) and Opposer challenged the assignment. The Board held that it was the responsibility of the applicant to provide documents demonstrating a transfer of part of the applicant’s business to which the mark pertains. The assignment document did not make a reference to a transfer of any part of the applicant’s business, and the record did not contain any documents showing a transfer of the applicant’s business or a portion thereof. In this case, the Board simply could not envision a transfer of a railroad business with its corresponding assets and liabilities, absent written documents.

See Philip Restifo v. Power Beverages, LLC , Opposition No. 91181671 (TTAB Sept. 21, 2011) [not precedential], where the Board held that §10 of the Trademark Act was not violated by an assignment of an intent-to-use application. The Board held that licensing a third party to manufacture and distribute the branded goods qualifies as an ongoing business. In addition, the applicant assigned all rights he had in his company to the assignee and relinquished his personal interest in the business demonstrating that the assignee was a successor to the business. There were also two independent agreements showing a larger transaction between the parties in this case.

Trademark attorneys must take care in counseling applicants filing intent-to-use applications because of these special rules. If an applicant has not filed an Allegation of Use or Statement of Use at the time it would like to assign an intent-to-use application, it may consider licensing the use of the mark to the prospective assignee. A written trademark license should be negotiated and prepared. Then the use of the trademark by the licensee entity can form the basis for the applicant filing either an Allegation of Use or a Statement of Use. Once the proof of use is filed, then the assignment can occur. It is important to consult with trademark counsel, before assigning a mark. If you have questions pertaining to trademark assignments, please contact the firm for a courtesy consultation .

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Assignment of Intent-To-Use Trademark Applications in USPTO

Intent to use trademark application assignments explained

It is common knowledge that building and protecting a brand is critical to the success of any startup company and entrepreneurs and tech startups often apply for federal Intent-to-Use Trademark Applications immediately after deciding on a new venture, often long before the new product or service is in the marketplace or even before corporate formalities have been addressed.

What is an Intent-To-Use Trademark Application

Intent to use trademark assignments explained

The United States Patent and Trademark Office ( USPTO ) started to allow for the filing of “intent-to-use” applications in 1989. This means that applicants with a bona fide intent to use a given mark can begin the process of securing federal trademark protection concurrently with developing new business. However, before such an application can mature to registration, the applicant must submit evidence that the applied-for product or service is complete and publicly available to consumers.

The legislative history underlying this “new” approach made clear that warehousing of, or trafficking in, trademarks would not be tolerated. Thus, intent-to-use applications include a declaration that an applicant must sign, under penalty of criminal perjury, attesting to the fact that it has the requisite bona fide intent to use the applied-for mark in commerce in connection with the goods or services identified in the application.

As another preventative measure, the law severely restricted the assignment of intent-to-use applications; namely, that in most circumstances, such a transfer of ownership is not valid until after an applicant has formally submitted evidence of use to the USPTO. If the assignment is later found to be improper, the underlying application would be void and any resulting registration would be subject to cancellation.

Section 10 of the Trademark Act (15 U.S.C. §1060), frequently called the “anti-trafficking” provision, does provide for one exception to the general rule: an intent-to-use application may be assigned prior to filing proof of use if the assignment is “to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.”

Intent-to-Use Trademark Applications Assignment Requirements

Courts will consider a number of factors when determining if an assignee is truly a successor to the business of an original applicant, including:

whether there was a transfer of the business and the goodwill of the trademark;
whether there is continuity of management;
whether the assignee is producing goods or rendering services similar to the original applicant;
whether there has been a transfer of assets;
whether there are documents to corroborate the supporting facts

The fact-finder will evaluate all of the available facts and documents to determine if the assignment of the intent-to-use application was ultimately part of a larger transaction between the applicant and the assignee.

According to the Trademark Trial and Appeal Board (TTAB) in Exel Oyj v. Edmont P. D’Ascoli [Opp. No. 91160397 (2008)]: “The statute cannot be read to require, as a precondition for assignment of an intent to use application, that there be an ongoing and existing business, or portion thereof, for each of the goods in an intent to use application. Rather, we consider the statute as allowing for assignment of intent to use applications when (i) the overall business of the applicant was transferred, or (ii) if the intent to use applicant remained an ‘ongoing and existing’ business after the assignment, the portion thereof to which the mark pertains was transferred. The statute must allow for the transfer of a Section 1(b) application claiming a bona fide intention to use the mark for goods which are not yet in production or which may be in the planning stage, and which may represent an extension of an applicant’s business. The statute does not require that the mark ultimately must be used on each of the goods identified in the application that has been transferred lest the assignment, ex post facto, be rendered invalid.”

Additionally, in Philip Restifo v. Power Beverages, L LC [Opp. No. 91181671 (2011)] [not precedential], the applicant assigned all rights he had in his company to the assignee and relinquished his personal interest in the business, demonstrating that the assignee was a successor to the business. There were also two independent agreements showing a larger transaction between the parties. The Board ultimately held that this assignment was valid.

Considerations of how to file an intent-to-use trademark application and whether or not to file an assignment subsequent thereto have complex legal implications. Entrepreneurs, tech startups, and other new ventures with new brand names are wise to consult an experienced trademark attorney on these and other issues going into the brand name selection and adoption phase of a new venture.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; [email protected].

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2024. All rights reserved.

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Intent-to-Use TM Applications Usually Cannot Be Assigned

An Intent-to-Use trademark application usually is not assignable. Plan ahead or know how to avoid the dilemma. Trademark applications can be based on actual use which has already occurred, or an applicant’s intent to use the mark in the future. Use-based applications are freely assignable; ITU applications are not. An ITU application can only be assigned to a successor to the business, or a portion of the business to which the mark pertains, and only if that business is ongoing and existing. When an entire business is being sold, ITU applications can be included in the sale. However, a business cannot carve out and sell an ITU application, even if wants to sell the particular brand or merely move the ownership to an affiliated entity.

In corporate transactions or restructuring, this prohibition could negate a trademark registration if the transfer is improper. Similarly, if an ITU application is collateral, the secured party needs to be careful how it takes assignment of that collateral at foreclosure.

One way to avoid this dilemma is in advance, form a new entity that will run that portion of the business related to the brand, and file an intent to use application in the name of that entity.

If a business has not taken these actions yet still wants to sell a brand that is connected with an ITU application, the solution is to give the “buyer” an exclusive license to use the mark, which by terms of the agreement converts to an assignment once the mark has been used and the owner files evidence of use with the U.S. Patent and Trademark Office. As part of that license agreement, the party should contemplate how the original applicant will execute and deliver an assignment when the time comes. It may be prudent to have a signed assignment as an exhibit, to be effective once a Statement of Use or Amendment to Allege Use has been filed for the application.

The reason one cannot transfer ITU applications is because Congress did not want the ITU applications to become a commodity which people hoard.

Ned T. Himmelrich 410-576-4171 • [email protected]

October 05, 2023

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Himmelrich, Ned T.

Technology & Intellectual Property

Can an Intent-to-Use Trademark Application Be Assigned?

It is possible to file an intent-to-use trademark application if you are not yet ready to use your mark in commerce but plan to in the future. When filing this type of trademark application, it is important to list the appropriate applicant — but can an intent-to-use trademark be assigned? To answer this question, it is necessary to understand intent-to-use trademarks and assignments in greater depth. Contact the experienced intellectual property attorneys at War IP Law, PLLC at (202) 800-3754 to learn more about all of your legal options.

Why File an Intent-to-Use Application?

It is important to understand why someone would want an intent-to-use trademark application. This type of application allows a person to file before actually using the trademark in commerce, resulting in an earlier application date — potentially one ahead of a competitor. In the case of a legal conflict, the person who filed first could receive priority for the trademark. Filing an intent-to-use application involves submitting an initial application form and selecting the option “Section 1 (b)” for “Basis for Filing.” It is important to note that there is often a great deal of research that accompanies whether or not a person has the legal right to even file an intent-to-use application, as their mark or intellectual property may already be taken by someone else. Visiting with an experienced IP attorney can help you understand what your legal options are.

The Meaning of “Use in Commerce”

Anyone who files for an intent-to-use trademark must have the intention of using the mark with the applied-for goods and/or services. In terms of goods, future use could be on the products themselves, the packaging, or the point-of-sale displays. For services, the future use could be for the sale, advertising, or services actually rendered in commerce. The owner of the trademark must use the mark in the ordinary course of trade, which means use of the mark cannot be just a token for the purpose of reserving the trademark.

Why Might You Want to Assign an Intent-to-Use Trademark?

It is important to put a trademark in the right name to avoid the United States Patent and Trademark Office (USPTO) declaring it void. An invalid assignment voids the underlying application and registration. The laws of intellectual property can be complex and confusing, and visiting with a seasoned IP attorney can help you learn all of your options.

Can an Intent-to-Use Trademark Application Be Assigned by the Owner?

Trademarks always have an owner as well as an applicant. Through assignment, the owner can transfer the trademark to another person, and this is a relatively common practice. However, assignment is more difficult when the trademark is pending an intent-to-use application. This is because of Section 10(a)(1) of the Lanham Act § 10 (15 U.S.C. § 1060) (often called the anti-assignment or anti-trafficking provision).

The anti-assignment provision means it is not possible to assign an intent-to-use trademark before first filing either an amendment to allege use (AAU) or a statement of use (SOU). An AAU is possible only when the owner has actually used the mark in commerce or in connection with the goods or services named in the application.

An applicant can file a SOU within six months of the USPTO issuing a notice of allowance (NOA) or during any extension period. Either of these involves the applicant submitting an example of how he or she will be using the trademark to sell the products or offer the services listed in the application. The applicant also needs to provide a statement that explains how he or she will be using the specimen in commerce by a particular date. Assigning an intent-to-use application before filing a verified allegation without an AAU or SOU will mean the application or assignment is void.

Exceptions to the Anti-Assignment Provision

There are exceptions to the anti-assignment provision when the intent-to-use trademark is assigned to a successor, either of the entire business or of a portion of the business. The successor must be connected with the trademark. Additionally, the Trademark and Appeal Board (TTAB) of the USPTO and the courts have routinely determined that an exception is inapplicable because it violates the provision in some way.

Furthermore, the transfer to a successor can only be to an ongoing and existing business. This means the applicant must be providing goods or services as specified in the application, although it does not require business for each one of the goods named. The TTAB will determine if the assignee is a successor by considering if:

A transfer of business and good will of the trademark has occurred
The management will be continuing
The assignee is producing similar products or providing similar services to the applicant
A transfer of assets has taken place
Documentation supports all of the above

How to Avoid Problems with Your Trademark Application

The above demonstrates that it is important to carefully consider who is named as the applicant for your trademark from the start. An applicant can be a single individual, multiple individuals, or an entity. If an applicant has not yet put a trademark into commerce, naming a single individual would give this person the sole requisite to use the mark, including through an entity the individual organizes at a later date or through a licensee. Alternatively, all the named individuals will have the requisite intention to use the mark. Lastly, if an applicant chooses to name an entity, this entity must already be legally organized and recognized.

Once a person has put a trademark into commerce, they should name the individuals or entity that will be using the mark (using it themselves or through a licensee) as the applicant. The same individuals or entity will also be the owner. However, if a person names individuals as intent-to-use applicants and organize an entity to use the trademark after filing an intent-to-use application, they may only assign an application to the entity who is a successor (meeting the requirements stated above). Additionally, they may make an assignment after they have filed a document with the USPTO stating that the applicant or licensee has used the trademark.

Support with Your Intent-to-Use Trademark

The answer to “Can an intent-to-use trademark application be assigned?” can often seem confusing and challenging to answer. Contact our dedicated legal team at War IP Law, PLLC at (202) 800-3754 for more information and to find out if we can provide you with support for your intent-to-use trademark application.

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Intent to Use Trademark

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Home » Intent to Use Trademark

In 1989 the U.S. Patent and Trademark Office began to allow Intent to Use (ITU) trademark applications. Prior to that time use in commerce was a prerequisite to filing a trademark application. However, it is no longer necessary to utilize a trademark in commerce to acquire rights.

What is an Intent to Use Trademark?

When the Trademark Law Revision Act of 1988 went into effect, Intent to Use trademark applications were finally accepted. The United States Patent and Trademark Office (USPTO) began allowing applications as long as there was a bona fide intent from the applicant to use the trademark in commerce. This resulted in a nearly 35 percent increase in registration requests between 1989 and 1990.

It may seem difficult to prove a good faith intent to use a trademark in commerce, but the USPTO doesn’t make this burdensome. As long as you include a sworn statement in your application, you’ll have provided sufficient evidence that you plan on using your trademark commercially. In the event of a dispute however, you should have some written plans as evidence to prove that you truly had plans to use the trademark. There are several benefits of an Intent to Use trademark. Here are just a few:

Getting an earlier filing date and perhaps a jump on competitors.
Potential avoidance of trademark infringement claims since actual use has not begun.
Discover if trademark is considered generic or descriptive prior to use.
Puts public on notice of your intent to use a specific trademark in commerce.

Filing an Intent to Use trademark application will not result in registration on its own. It will get the process started so you can go through an examining attorney and the Official Gazette, but you’ll still need to prove actual use prior to receiving full federal protection.

Intent to Use Trademark Application Process

The initial steps of the Intent to Use trademark application process are very similar to the normal registration procedure. An intent to use application does not require a specimen of use or dates of first use.

The Intent to Use trademark application process proceeds as follows:

The application is forwarded to examining attorney if it meets all filing requirements.
The Examining attorney reviews your desired trademark to see if it conflicts with other trademarks.
If the trademark is registerable, it is published in the Official Gazette for 30-day opposition period.
Notice of Allowance is issued if there is no opposition to registration.
A Statement of Use (SOU) or request for extension is filed.
Once actual use is proven, the registration issues.

This is the typical procedure for filing an Intent to Use trademark application, but there are other times during the process when you can also file your specimen of use as evidence of actual use. Once you have received your Notice of Allowance, you can submit a Statement of Use or extension request. Prior to publication, however, you can file an Amendment to Allege Use and provide specimens of use. You cannot submit evidence after publication until the Notice of Allowance is issued.

The important thing to remember is to respond to all USPTO correspondence in a timely manner. Every step along the way has important deadlines, and failure to abide by them will result in trademark abandonment .

Intent to Use Trademark Application

It’s smart to review the Intent to Use trademark application prior to beginning the process. This is the exact same application you would file if your trademark was already being used in commerce. If you scroll down to the Basis for Filing section, however, you’ll see options for actual use and intent to use.

To provide a Statement of Use or Amendment to Allege Use, click here for the online form. The Request for an Extension of Time can be found here . While the entire trademark search and trademark application process can be completed by anyone on their own, we highly recommend that you hire a trademark attorney to handle the process for you.

Intent to Use Trademark Timeline

Registering a trademark typically takes anywhere from six months to a year. Due to the additional requirements when you don’t have evidentiary specimens to submit, however, the Intent to Use trademark timeline will take longer if you don’t have your specimen of use. Even if everything goes smoothly during this process, you can expect to wait seven months from the time of filing to receive your Notice of Allowance. It takes at least an additional two months after you submit a Statement of Use to receive registration.

Here is a timeline of what you can expect:

Day 1 : You file your Intent of Use trademark.
3 Months after filing : Your application is assigned to a USPTO examining attorney.
1 Month after assignment : Trademark is approved and published for opposition or an office action issues.
3 Months after publishing : If an intent to use application, a Notice of Allowance issues.
6 Month deadline : For intent to use applications, a Statement of Use or request for extension must be submitted within six months.
1 Month after filing SOU : The USPTO reviews your submitted specimens.
3 Months later : Application registers.

If you receive an office action from the examining attorney, you have six months to respond. If they receive your response and approve, it usually takes about two months before being published in the Official Gazette. The remaining Intent to Use trademark timeline depends on whether or not you file extensions.

Intent to Use Trademark Application Fee

In addition to the initial application fee which is typically $250 per class, there are costs related to submitting your Statement of Use and requesting extensions. Once you submit an Amendment to Allege Use or Statement of Use, you’ll need to include an additional $100 per class of goods or services included in your initial application. If you choose to file an extension – each of which will provide an additional six months – you’ll need to pay $125 in additional fees per class.

There are some nuances to these rules. For instance, you can submit a Request to Divide. If you’ve established evidence of sufficient use in commerce for one class in an application but not the others, you can split the application into different applications. This allows your trademark registration to be approved in a timelier manner, but there’s also a fee of $100 for every new application created.

Assignment of Intent to Use Trademark Application

There are special rules when it comes to assignment of Intent to Use Trademark applications. Whereas trademark owners and individuals with use-based applications can assign their rights at any time, this isn’t the case with Intent to Use trademark applications. This is because the USPTO is very strict regarding potential reserving and warehousing of intellectual property. Because of this, if possible it is best to wait to assign the trademark until after it registers.

Before actual use is proven, Intent to Use trademark ownership can only be assigned to a successor of the entire business. Additionally, the company must currently exist and be conducting ongoing activities. To begin such a transfer, those involved need to first sign an agreement between the parties laying out the terms of the deal.

Afterwards, this document must be submitted, along with a Recordation Cover Sheet, to the Assignment Recordation Branch. Assignments aren’t typically investigated, so an examining attorney will only issue an inquiry in rare instances. Although assignments aren’t thoroughly investigated by the USPTO, it’s important that you don’t attempt to sidestep rules. If you ever end up facing trademark litigation , the defendant could get the trademark cancelled by showing that you violated anti-assignment provisions.

If you have an intent to use trademark issue, please contact us for assistance.

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Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications. In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned “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 an existing.” So why are registrations still being canceled for violating these terms?

Unlike many other jurisdictions, US trademark jurisprudence is founded on the principle of use. Accordingly, a federal trademark registration will not issue until after proof of use has been filed by a US applicant. The US Trademark Office began permitting the filing of intent to use applications in 1989, requiring that proof of use be filed before a registration based upon such an application would issue. The underlying legislative history for this “new” procedure made clear that there would be no tolerance for warehousing of and trafficking in trademarks. Thus, the law requires an applicant filing an intent-to-use application to sign a declaration under penalty of criminal perjury attesting to the fact that it has a “bona fide” intent to use the applied-for mark in commerce on or in connection with the goods and/or services listed in the application as filed. In addition, the Trademark Act, with limited exceptions, requires that a mark be in use before an application for registration can be assigned to a third-party. Seems simple right?

Well, simple can get complicated under the right circumstances. In the recent TTAB case, Cent. Garden & Pet Co. v. Doskocil Mfg. Co ., No. 91188816 (TTAB August 16, 2013), a registration used as a basis for filing an opposition proceeding was canceled on a counterclaim for violating the anti-assignment provisions above. In that case, the application which eventually matured into the canceled registration was filed by a company called All-Glass Aquarium Co., a wholly-owned subsidiary of Pennington Seed. Pennington Seed was a wholly-owned subsidiary of the Opposer in this case Central Garden & Pet Company. While the All-Glass application was pending and before proof of use was filed, All-Glass assigned the application to Central Garden. As anyone who practices before the USPTO knows that documents such as assignments which are filed for recordation at the USPTO are not reviewed for accuracy or validity. Rather, if they are filed in the proper format with the proper filing fee, whatever documents are filed will be recorded without review. Thus, with the recordation of this assignment document, the intent-to-use application was assigned to Central and the Registration eventually issued in its name.

The undisputed facts in the case demonstrated that the assignment was not part of any larger transaction between the companies, that Central was not a successor to All-Glass or any part of it, and that All-Glass continued in business in the exact same manner as it had before the transfer continuing to produce and sell products under the assigned mark. Thus, the only thing which was exchanged in the transaction between these two companies was the mark and the goodwill associated with the mark. Neither all or a portion of the Applicant All-Glass was transferred to Central.

In defending against the counterclaim to cancel the registration for an invalid assignment, Central argued that because All-Glass and Central were “closely related companies” and because the assignment did not cause any “confusion or discontinuity” in the use of the mark, that there was no violation of the statute. The Board disagreed completely. It stated that because “Central owned all of the stock in Pennington Seed, and… Pennington Seed owned all of the stock in All-Glass, which in turn owned the…application [at issue], [that] [i]n one sense, it could be said that Central owned the application all along.” However, the Board made clear that since Central chose to structure its business using multiple and separate corporate subsidiaries, each of which counts as a “person” under Section 45 of the Trademark Act, it must live with the fallout from that decision. Although such a business structure may offer certain advantages, it does have some strictures and “the existence of a corporation cannot be turned on or off at will to suit the occasion.” Moreover, even though Central was not trafficking in intent-to-use applications and did not engage in any other type of bad faith conduct, the Board was adamant that, regardless, “it does not follow that either entity should be free from the restrictions of the statute.” In other words, the language in the statute is clear, its intent is unquestionable, and it means what it says.

There are several takeaways here. First, related companies are not free to assign intent-to-use applications between them unless they meet the strict language of the statute for doing so. Common ownership and/or control alone are not sufficient to meet the standards for a valid assignment. Second, be very careful when filing an intent-to-use application to ensure that the named applicant should be the applicant until such time as proof of use can be filed. For example, sometimes an individual will file an application in his or her name personally prior to forming a corporate or other entity in order to get the earliest possible filing date. In such a situation, he or she may not be able to assign the application to the later-formed entity until after proof of use has been filed. A potential solution to that situation is to have the individual applicant license the rights to the applied-for mark to the newly formed entity so that the eventual use of the mark by the licensee entity can form the basis for filing proof of use, paving the way for assignment of the application to the company. A written license is highly recommended for this purpose. Of course, if an individual applicant does operate an “ongoing an existing business” to which the mark pertains, and that entire business is transferred to a subsequently created entity, then the pending intent-to-use application may be assigned as well. Finally, be sure title to your issued registration is valid before asserting it against a third party and risking cancellation.

Even seemingly easy and simple can be tricky if you’re not paying attention.

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August 22, 2013

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Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.

By Carolyn S. Toto , Mark R. Kendrick, Bobby Ghajar

Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications which started as ITU applications), such as improper assignment or lack of a bona fide intent to use the mark. We review the case law highlighting these issues and provide practice pointers to address these issues.

In the United States, one can file an intent-to-use (ITU) application, in effect reserving the mark and establishing a constructive priority date before the mark is actually used in commerce. The U.S. Patent and Trademark Office (USPTO) will not register an ITU application until the applicant files proof that it is using the mark in commerce. The applicant may do so in the form of an amendment to allege use before the Trademark Examiner approves the mark to be published for opposition, or in the form of a statement of use after the mark survives the opposition period and a Notice of Allowance is issued. An applicant has up to three years from the date of the Notice of Allowance to file a statement of use (SOU) to represent the mark is being used.

Section 10(a)(1) of the Lanham Act, also referred to as the anti-assignment provision of the Trademark Act, prohibits assignments of ITU applications prior to the filing of a statement of use (SOU) or amendment to allege use (AAU), with one exception. See 15 U.S.C. §1060(a)(1). It is possible to assign an ITU application if it is “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.” Among other factors that the courts and Trademark Trial and Appeal Board (TTAB) evaluate when determining the validity of an assignment of an ITU application, are the sufficiency of the transfer documents, whether the assignee is truly a successor to the business, whether the business is “ongoing and existing,” and whether the ITU was filed in the correct entity’s name. The Congressional intent behind enacting the prohibition of assignment of ITU’s was to prevent trafficking of or profiting from the sale of an ITU application. See The Clorox Co. v. Chemical Bank , 40 U.S.P.Q.2d 1098, 1100-01 (TTAB 1996).

Last summer’s TTAB decision in Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc . Opposition No. 91188816 (TTAB August 16, 2013) (“Central”) serves as an excellent reminder that it is important to consider Section 10(a)(1)’s requirements when filing or acquiring ITU applications.

The Central Decision: In Central , All-Glass Aquarium Co., Inc. (“All-Glass”) filed an ITU application for the ZILLA mark on December 7, 2006 for aquariums, terrariums and other types of equipment. All-Glass was owned by a company named Pennington Seed, Inc. which in turn was owned by Central Garden. On June 26, 2007, All-Glass assigned its ITU application to Central Garden, and the registration was issued to Central Garden on February 19, 2008. However, All-Glass continued its business and did not transfer the business over to Central Garden.

Central Garden subsequently became involved in an opposition proceeding against a third party (Doskocil), and in response, Doskocil challenged Central Garden’s trademark rights, arguing that the assignment from All-Glass to Central Garden violated Section 10(a)(1). The TTAB concluded that the assignment from All-Glass to Central Garden did not qualify for the statutory exception to Section 10(a)(1) because the only thing that the entities exchanged was the mark and the “goodwill of the business connected to the mark.” The court noted that no portion of the business to which the mark pertained was transferred from All-Glass to Central Garden. In reaching that conclusion, the TTAB rejected the argument that cancellation of Central Garden’s registration ran counter to the purpose of Section 10, and found that the language of the statute was clear that an ITU application may only be assigned to a successor to the assignor’s business or at least the relevant part of it. Accordingly, the TTAB cancelled the mark. The effect of the TTAB’s ruling was twofold: not only did Central Garden lose its registration, but it lost its ability to claim priority (via the filing date of the ZILLA application) against Doskocil.

The TTAB’s rigid reading of Section 10 was initially set forth in Clorox Co. v. Chem. Bank , 40 USPQ 2d 1098, 1106 (TTAB 1996). In Clorox , an assignment of the ITU application was made from the trademark owner to its bank as collateral for a loan prior to the filing of the SOU. The assignment included a provision that once the loan was paid off, the ITU trademark application would be transferred back to the owner. The TTAB analyzed the language of the document at issue and found that, regardless of the parties’ intent, the agreement was an assignment of rights that violated Section 10(a)(1). The TTAB concluded that the application did not qualify for the statutory exception because there was no transfer of rights of the ongoing business to which the mark pertains, and the bank was not a successor in business to the company since the company was still going to operate its business. The TTAB ruled that the improper assignment voided the application, and that any resulting registration must be cancelled.

Other TTAB panels have reached a similar conclusion. In Railrunner N.A., Inc. v. New Mexico Department of Transportation (“NMDOT”) and New Mexico Mid-Region Council of Governments (“MRCOG”), Opposition No. 91172581 (TTAB, July 17, 2008) (not precedential) (“ Railrunner ”), MRCOG filed its ITU application in February 2005. In July 2007, MRCOG assigned its ITU application over to NMDOT before filing an AAU or SOU. An opposition proceeding was instituted which challenged the assignment. In response, NMDOT provided only the assignment and a brief affidavit as evidence of the succession of the business, and did not provide any detailed explanation of the transfer of the business or documents evidencing the succession of the business. The TTAB stated that it was incumbent upon the applicant to either provide documents evidencing the succession or to recite facts in an affidavit from which the fact-finder could conclude the transfer took place. The TTAB granted Railrunner’s summary judgment motion and voided the ITU application because the assignment of the opposed ITU application was not to a successor in business. Cases like Railrunner are a reminder that the acquiring party must ensure the sufficiency of the transfer documentation.

In Amazon Technologies, Inc. v. Jeffrey S. Wax , Opposition No. 91187118 (TTAB August 31, 2010), Mr. Freeland and Mr. Wax jointly filed an ITU application for AMAZON VENTURES in March 2000. Mr. Freeland assigned, in October 2008, his the entire right, title and interest in and to AMAZON VENTURES to Mr. Wax. In a latter opposition, Amazon Technologies argued that Freeland and Wax violated Section 10(a) because they had no ongoing and existing business; however the TTAB held that an assignment is defined as “[a] transfer or making over to another the whole of any property” and that in this case there was no transfer to “another” (as Mr. Wax was an original joint applicant and was now the sole remaining applicant). The TTAB ruled that the facts evidenced a change in ownership, which did not violate 15 U.S.C. § 1060(a)(1) because it was not an “assignment” that was prohibited under Section 10(a)(1).

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Trademark Assignments & Intent-To-Use Applications

All trademark assignments must transfer the good will that is associated with the use of the mark for a particular business. Section 10 of the Trademark Act (Lanham Act) requires any trademark application or registration be assigned in writing along with the good will of the business symbolized by the trademark. To review the basic principals for trademark assignments, see our web page entitled, Trademark Assignments . If you have questions pertaining to the United States Patent & Trademark Office's procedures for recording an assignment, see our web page entitled, Recording Trademark Assignments And The Specific Rules That Govern . This page will cover issues involving trademark assignments and intent-to-use applications.

If a trademark application is filed under Section 1(b) of the Trademark Act, there are different rules for assigning applications based on whether or not the Applicant has commenced use of the mark in commerce with the goods or services identified in the application. If there has been use, then an Allegation of Use or a Statement of Use must be filed with the United States Patent & Trademark Office ("USPTO"). Once the use statement is filed, then the assignment rules will be the same as those that apply to use applications or trademark registrations. Conversely, if the Applicant has not started to use the mark in commerce yet, an assignment can only be made to a successor to the business (or a portion of the business). In other words, under these circumstances, a trademark assignment must transfer the mark and the good will of the business, along with part of or all of the ongoing and existing business associated with the mark. See 15 U.S.C. § 1060(a)(1).

A trademark applicant must strictly adhere to the statutory provisions, if an assignment is made prior to filing an Allegation of Use or a Statement of Use. This means that the actual language in the Assignment should specify that the trademark application is being assigned as part of the entire business or as a portion of the business to which the mark pertains, along with the goodwill of the business symbolized by the trademark. In addition to the language being concise, there must be an ongoing or existing business pertaining to the mark to transfer as well. The reason for strict adherence to the statutory provisions is that a trademark applicant will want to insulate itself from challenges questioning the validity of the assignment.

If a challenge based on transferring an intent-to-use application before filing a use statement is successful, the trademark application will be deemed void. The Trademark Trial and Appeal Board (the "Board" or "TTAB") or a court will look to determine if the assignment is part of a larger transaction between the assignor and the assignee. See Central Garden & Pet Co. v. Doskocil Manufacturing Co. , 108 U.S.P.Q.2d 1134 (TTAB 2013), where the Board cancelled a trademark registration because the intent-to-use applicant assigned a mark before filing a Statement of Use, and did not transfer a portion of the ongoing business to which the mark pertained. Even though in this case, the mark was in use by the time the assignment was filed, the Board held that use in commerce was not a factor, since the filing of the Statement of Use had not occurred prior to the assignment.

The Board issued a very different decision in Philip Restifo v. Power Beverages, LLC substitued for Paul Kidd (aka Ishmael Hassan) , Opposition No. 91181671 (September 21, 2011) [not precedential]. The Board noted that in this case, although there was no specific language utilized in the assignment document that the ongoing business to which the intent-to-use application pertained was transferred, evidence showed otherwise. The record indicated that additional assets other than the mark, and the good will associated with use of the trademark were assigned. These cases highlight the special rules that apply to intent-to-use applications. Practitioners should pay close attention to the facts surrounding a trademark assignment if it will occur prior to a Statement of Use is filed and to use concise language in the assignment document. If you have questions pertaining to trademark assignments or other trademark related inquiries, kindly contact our office for a courtesy consultation .

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Assignments of intent-to-use applications will be closely scrutinized

Emerald Cities Collaborative, Inc. v. Roese , No. 2016-1703, 2016 WL 7210145 (Fed. Cir. Dec. 13, 2016) (not precedential)

The Federal Circuit’s recent decision in Emerald Cities Collaborative, Inc. v. Roese provides a clear indication that any agreement to assign a pending intent-to-use trademark application will be closely scrutinized to determine whether the transfer violates the statutory prohibition against trafficking in inchoate marks.

Even an agreement, such as the one in this case, that explicitly purports to assign the mark only upon registration will be rejected if other provisions within the agreement transfer too much control to the assignee at the time of execution. Thus, the very provisions a purchaser would typically include in a protectively drafted trademark assignment, if included in an assignment of an intent-to-use application, might very well cause the resulting registration to be forever vulnerable to cancellation. Trademark owners should take this holding as a firm reminder that agreements to assign intent-to-use applications must be timed and structured with care and thoughtful counsel.

Section 10 of the Lanham Act, 15 U.S.C. Section 1060(a)(1), provides that no pending trademark application filed pursuant to Section 1(b), otherwise known as an intent-to-use application (an “ITU”), is assignable until the applicant notifies the United States Patent & Trademark Office that it has commenced use of the mark in commerce, either by filing a statement of use or amending the application to one based on use (together a “Statement of Use”). (The sole exception to this rule, which does not apply in this case, concerns an assignment to a successor to the applicant’s business if that business is ongoing and existing. See 15 U.S.C. § 1060(a)(1).) The prohibition is intended to “prevent utilization of the intent-to-use system to traffic in marks” that lack any attendant goodwill. S. REP. 100-515, 25, 1988 U.S.C.C.A.N. 5577, 5587.

Because of Section 10, purchasers of pending ITU applications from non-successor entities prior to the filing of a Statement of Use often will execute an agreement under which the assignment will take place upon registration or, at least, upon the filing of a Statement of Use, and not upon the agreement’s execution date.

In Emerald Cities Collaborative , the Trademark Trial and Appeal Board (the “Board”) cancelled Emerald Cities Collaborative Inc.’s (“ECC”) registration after Sheri Jean Roese (“Roese”), a defendant in an opposition brought by ECC, challenged the manner in which ECC had purchased the mark from the original applicant, an individual named Perry Orlando (“Orlando”). Opposition No. 91197060, aff’d , No. 2016-1703, 2016 WL 7210145 (Fed. Cir. Dec. 13, 2016). Roese demonstrated to the Board and then to the Federal Circuit that the agreement between ECC and Orlando, which was executed before the filing of a Statement of Use, was an assignment effective on the execution date. Notably, several key provisions of the agreement explicitly indicated that they would not take effect until the application had matured to registration , and, on this basis, ECC’s counsel argued that the agreement was merely an agreement to assign the mark in the future, not an immediate assignment. Nevertheless, the Board held, and the Federal Circuit affirmed, that the agreement, taken as a whole, appeared to instantly transfer “control and ownership of the . . . application in a ‘manner tantamount to an assignment.’” Emerald Cities Collaborative, Inc. v. Roese , No. 2016-1703, 2016 WL 7210145, at *5 (Fed. Cir. Dec. 13, 2016) (citing Board decision). As such, the registration was held to have violated Section 10 of the Lanham Act and was cancelled.

The agreement, entitled “Trademark Assignment and License,” set out the terms of a transfer of the trademark THE EMERALD CITY from Orlando to ECC, with a license back from ECC to Orlando. ECC urged the Court to consider the assignment and license provisions, both of which explicitly referenced the post-registration timing. The “Assignment” paragraph read:

Orlando agrees to convey and assign unto ECC, all right, title and interest in and to the Mark and any and all derivatives thereof, together with any and all goodwill associated therewith, and the right to sue and recover damages and profits for past, present and future infringement, if any, related to the Mark, at such time as the Mark is registered at the [PTO] . . . .

Id . at *1 (emphasis added by Court). The “License” paragraph read “ Upon registration of the Mark by the [PTO] and completion of the transfer of the Mark to ECC , ECC agrees to license certain rights in the Mark to Mr. Orlando . . . .” Id . (emphasis added).

However, applying Delaware’s law of contract interpretation (which governed the agreement), the Court looked beyond this language to the whole of the agreement to determine the true nature of the transfer. In so doing, the Court identified a number of provisions that undermined the timing mentioned in the sections quoted above, including the following:

• Regarding use of the mark “[b]etween the Effective Date and the Registration Date, Orlando may continue to use the Mark . . . ” and must use the mark by a date certain.

• Upon receipt of a payment due “promptly” after execution, Orlando must provide ECC’s agent with an irrevocable Power of Attorney “to take over continued prosecution of the application.”

• The agreement “commences on the Effective Date.”

• Upon termination of the agreement, Orlando “shall promptly cease use of the Mark.”

• Orlando must adhere to basic quality control requirements.

• “Orlando shall not challenge ECC’s use of the Mark or support challenges by third parties, whether before or after the Registration Date.”

• “Only ECC shall have the exclusive right to file oppositions or claims against the users of confusingly similar trademarks.”

Provisions such as these are typical in arm’s-length trademark assignments with phase-out or license-back components, and it is not surprising that a purchaser would want to obtain these protections vis-à-vis an assignor. However, the Federal Circuit’s decision strongly indicates that purchasers must be wary of incorporating such terms in an ITU transfer agreement. Instead, circumspect drafting and/or multiple agreements are likely required so as not to leave the subject registration forever vulnerable to cancellation, and the negotiated agreement moot.

Note: The Federal Circuit indicated that its opinion is non-precedential, meaning that while parties may cite this case in future Federal Circuit proceedings, the Court will not be bound by its prior holding. But, as a practical matter, it would be risky for putative assignees of ITUs to ignore the decision or its reasoning.

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Alerts March 14, 2017

Federal Circuit: Assignments of Intent-to-Use Applications Will be Closely Scrutinized

By Leo Kittay

Emerald Cities Collaborative, Inc. v. Roese , No. 2016-1703, 2016 WL 7210145 (Fed. Cir. Dec. 13, 2016) (not precedential)

The Federal Circuit’s recent decision in Emerald Cities Collaborative, Inc. v. Roese provides a reminder that any agreement to assign a pending intent-to-use trademark application will be closely scrutinized to determine whether the transfer violates the statutory prohibition against trafficking in inchoate marks.

Orlando agrees to convey and assign unto ECC, all right, title and interest in and to the Mark and any and all derivatives thereof, together with any and all goodwill associated therewith, and the right to sue and recover damages and profits for past, present and future infringement, if any, related to the Mark, at such time as the Mark is registered at the [PTO]. . . .

Id. at *1 (emphasis added by Court). The “License” paragraph read “ Upon registration of the Mark by the [PTO] and completion of the transfer of the Mark to ECC , ECC agrees to license certain rights in the Mark to Mr. Orlando . . . .” Id. (emphasis added).

Regarding use of the mark “[b]etween the Effective Date and the Registration Date, Orlando may continue to use the Mark . . . ” and must use the mark by a date certain.
Upon receipt of a payment due “promptly” after execution, Orlando must provide ECC’s agent with an irrevocable Power of Attorney “to take over continued prosecution of the application.”
The agreement “commences on the Effective Date.”
Upon termination of the agreement, Orlando “shall promptly cease use of the Mark.”
Orlando must adhere to basic quality control requirements.
“Orlando shall not challenge ECC’s use of the Mark or support challenges by third parties, whether before or after the Registration Date.”
“Only ECC shall have the exclusive right to file oppositions or claims against the users of confusingly similar trademarks.”

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Processing times Please note that due to an extraordinary surge in applications, processing times are longer than usual. See current trademark processing wait times for more information.

Intent to use (ITU) forms

Use these forms only if you have already filed the initial Trademark/Servicemark Application based on an intent-to-use the mark in commerce under Section 1(b).

Log in to access forms

To file TEAS and TEASi forms, select a form listed below. You will need to create a USPTO.gov account with two-step authentication and verify your identity before you can log in to access the forms. You can preview the forms without logging in on our form previews page.

For the latest information or to create a USPTO.gov account, review the Log in to TEAS and TEASi page .

1. Statement of Use/Amendment to Allege Use for Intent-to-Use Application

Use this form only if you have already filed the initial Trademark/Servicemark Application based on an intent-to-use the mark in commerce under Section 1(b). Before we will register a mark based upon a bona fide intention to use the mark in commerce (i.e., the applicant has not actually used the mark yet in commerce, but can claim in good faith that it plans to do so later), the applicant must (1) use the mark in commerce; and (2) file an Allegation of Use (Statement of Use/Amendment to Allege Use). The Allegation of Use may only be filed before the examining attorney approves the mark for publication in the Official Gazette (i.e., before the status of the application in the USPTO's TSDR database changes to Approved for Publication); if filed at this time, the filing will be identified as an amendment to allege use; or on or after the mailing date of the Notice of Allowance (NOA) (i.e., a written notice sent to applicant after the mark is published and the 30-day opposition period expires, signifying that the mark could register after submission of an acceptable allegation of use that includes evidence that the mark has been properly used in commerce). If filed at this time, the filing will be identified as a “Statement of Use” (SOU). The SOU must be filed within the 6-month period after the mailing date of the NOA, or within a previously-granted extension period

Note : Please check TSDR to make sure that your application is in the proper status for submission of the Allegation of Use form. If your application status is already “Approved for Publication,” then you must wait until the status changes to “Notice of Allowance issued;” otherwise, you are in what is called the “blackout period,” during which submissions cannot be processed.

Warning : Unlike with an Amendment to Allege Use filed before an application has been approved for publication, the applicant may not withdraw a Statement of Use (SOU) filed after a Notice of Allowance has been issued if the SOU fails to meet the statutory requirements. 37 C.F.R. §2.88(g); TMEP 1109.17 . However, the applicant may file one “insurance” extension request with the SOU, or afterwards, in the limited situation where time remains in the existing six-month period in which the SOU was filed. This would provide additional time to comply with the statutory requirements for filing the SOU. 37 C.F.R. §2.89(e)(1). See TMEP 1108.03 and 1109.16(c) .

2. Request for Extension of Time to File a Statement of Use

Use this form as follows: You have six (6) months from the issue date of the Notice of Allowance (NOA) either to file a Statement of Use (SOU) or apply for an extension of time to file an SOU (an “Extension Request”). An Extension Request is a sworn statement that the applicant still has a bona fide intention to use the mark in commerce, but needs additional time actually to use the mark. A filing fee of $125 per class of goods/services must be paid with the Extension Request. You may continue to file Extension Requests every six (6) months for up to a total of five (5) extensions of time. You must use the mark in commerce and file an SOU within three years (36 months) of the NOA issuance date. For more information, see TMEP Section 1108.01 .

Note : The six-month periods are based solely on the issuance date of the NOA, and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension.

3. Response to Intent-to-Use (ITU)/Divisional Unit Office action

Use this form either to: (1) respond to an Office Action that the Intent-to-Use (ITU) unit has issued after a mark has been published; or (2) pay an additional fee after a telephone or e-mail communication from ITU. Do not use this form to respond to an Office Action issued by either a law office examining attorney or a Post-Registration examiner. Also, do not use this form to file a Statement of Use; instead, you must file the specific Allegation of Use form . If you have received an Office Action from ITU regarding your application, you must respond within thirty (30) days of the issuance date of the Office action or prior to the expiration of the statutory filing period, or your application will be abandoned. Please refer to the Office Action to determine the proper response period. You should respond to each point raised in the Office Action fully and completely.

Reminder : A request to divide that is being filed with an allegation of use may be done directly through the TEAS “Allegation of Use” form . Please check TSDR to make sure that your application is in the proper status for submission of the Allegation of Use form. If your application status is already Approved for Publication, then you must wait until the status changes to Notice of Allowance issued; otherwise, you are in what is called the blackout period, during which submissions cannot be processed.

Additional information about this page

(480) 360-3499

[email protected]

Can I Assign a Trademark Application?

Trademark assignment is the process by which one party transfers its trademark rights to another party. The assignment is a contract, which can cover a few different items. It may be an assignment of common law trademark rights . There may also be a federal trademark registration involved, as well. You can even assign a trademark application. This post is specifically focused on transferring federal trademark applications, and avoiding the biggest pitfall in doing so.

When Can You Assign a Trademark Application?

In most situations, it is possible to transfer a pending trademark application along with any common law rights. If you read my previous assignment post , you may remember that any assignment must cover the goodwill associated with the mark. It is also a very good idea for the assignment to be written, like other contracts.

The main point of this blog post is really more about situations where you cannot assign a trademark application. An application cannot be assigned if it was filed on an intent to use basis , and neither a Statement of Use or Amendment to Allege Use have been filed. If such an assignment is made, even if a registration is obtained it will be subject to cancellation . There is a very good reason why such assignments are prohibited.

Intent to Use Assignments

The filing of intent to use applications has had a big impact on trademark law in the United States. These filings have not always been allowed under the law. However, the Lanham Act was amended in the late 1980s to allow filings for trademark applications based on a bona fide intent to use a trademark in commerce. These applications mean that someone can acquire rights to a name on a date before they have even started using a trademark.

The prohibition on assigning intent to use applications is meant to prevent trademark prospecting . By that, I mean it keeps people from filing applications just to sell them to others. That would create a system where you have to pay someone else in order to acquire trademark rights. It would be exactly like the system in place for website domain names. People buy up web addresses they think someone may want someday. Then sell them for much more than they initially paid. This is why the Trademark Office requires proof of use of a trademark before a transfer can take place.

Want a Professional to Help Assign Your Trademark?

Whether you are on the buying or selling end of a trademark assignment, you want to make sure that things are done correctly. I would be happy to let you know if an assignment can take place, to draft the assignment, and record it with the Trademark Office. If you would like assistance from a trademark attorney, please call me at (480) 360-3499, email me at [email protected] , or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.

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Premature Assignment of Intent-to-Use Application Voids that Application and any Resulting Registration

This article was edited and reviewed by FindLaw Attorney Writers | Last reviewed June 15, 2017

Legally Reviewed

This article has been written and reviewed for legal accuracy, clarity, and style by FindLaw’s team of legal writers and attorneys and in accordance with our editorial standards .

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Trademark law protects the public by protecting a company's ability to clearly identify itself through the use of unique marks on their products. This protection prevents confusion in the marketplace regarding the origin of the products sold. Trademarks protection is deeply impacted by the registration status of the mark at issue. Although a registered mark can receive protection and an unregistered mark cannot, there has been confusion regarding whether marks that are subject to a pending registration application are eligible to be protected under the law. The following article looks at this predicament and the critical legal impact of the timing of litigation .

The Trademark Act

Designed to prevent "trafficking" in trademarks, Section 10 of the Trademark Act, 15 U.S.C. §1060, prohibits the assignment of an intent-to-use trademark application before a party has filed an acceptable amendment to declare use or statement of use of the mark (except to the successor to the business of the trademark applicant, or to the successor to that portion of the business with which the trademark will be used). The act further requires that the business, or the portion thereof assigned, must be ongoing and existing.

The Clorox Case

In a case of first impression, the Trademark Trial and Appeal Board recently addressed the ramifications of premature assignment of an intent-to-use application in The Clorox Company v. Chemical Bank, U.S.P.Q. (TTAB 1996). In Clorox, the petitioner sought to cancel a registration, claiming that the underlying intent-to-use application was prematurely assigned. The respondent -- while noting that the application was assigned -- nevertheless argued that the intent of the parties, when executing the assignment , was to create a security interest; that the prohibition against assigning intent-to-use applications is to prevent trafficking; that respondent retained a bona fide intention to use the mark; that inasmuch as the parties intended to create a security interest, the activity which Section 10 was designed to prohibit was not present; that the intent of the parties, not the form of the "assignment" document, should prevail; and that, accordingly, cancellation of the registration was inappropriate. Moreover, the respondent pointed out that Section 10 of the Trademark Act does not stipulate the penalty for a premature assignment of an intent-to-use application, and argued that in this case -- where the parties were not engaged in trafficking -- the penalty should entail invalidating that assignment not canceling the trademark registration.

The board, however, rejected the respondent's arguments. Strictly interpreting the Section 10 prohibition, it noted that the respondent's trademark agreement did in fact constitute an outright assignment. Regarding the respondent's arguments about the appropriate penalty for premature assignment, the board found that Congress' purpose in drafting Section 10 was to prevent trafficking. After reviewing the legislative history of the statute, it concluded that Congress intended for prematurely assigned intent-to-use trademark applications, as well as any resulting registration, to be voided. Thus, the respondent's registration was canceled.

As such, those seeking to establish and use trademarks should exercise caution in the timing of license agreements, lest they lose the ability to seek enforcement and find themselves without recourse on account of their premature assignment.

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Is Your Intent Bona Fide? Intent-To-Use Trademark Applications, Part One

So you are planning to hit the market with a new product or service, and you have an awesome idea for a unique brand. You know it’s important to protect that brand with a trademark. However, do you also know how important it is to make sure that your trademark application properly captures the correct owner of the mark and that you have appropriate documentation regarding your intent to use the mark?

In this article—the first of a three-part series—we’ll highlight a few critical issues you must understand before submitting that trademark application to the U.S. Patent and Trademark Office, or USPTO. In Part Two of this series we’ll address ownership issues and improper assignments of intent-to-use applications, and in Part Three we’ll discuss common errors that are made when filing trademark applications and which ones are correctable and which ones are fatal.

What are my options when filing a trademark application?

U.S. trademark applications must designate at least one of five filing bases at the time of filing. The most commonly relied-upon bases include (1) use of a mark in commerce under §1(a) of the Trademark Act, and (2) bona fide intention to use a mark in commerce under §1(b) of the Trademark Act.

A § 1(a) use filing basis means that you are already selling products and/or services in commerce and that those products and/or services are branded with the trademark.

A §1(b) intent-to-use filing basis allows you to file an application to register a mark prior to establishing use of the mark in commerce. When filing an application under §1(b), you must submit a sworn statement attesting to your good faith intent to use the mark in commerce. A key benefit to filing a trademark application prior to establishing use in commerce is that the filing of the application constitutes constructive use of the mark provided that the application subsequently matures into a registration. Constructive use of the mark may also allow you to enjoy priority over another party’s subsequent use of a mark or subsequent filing of an application should a conflict develop.

In order to enjoy the benefits of an application filed under §1(b), it is critical to carefully consider when such an intent-to-use filing is appropriate, and what efforts and evidence should be documented in case your application or registration is later challenged.

When can I file an intent-to-use trademark application?

The applicant of a trademark application filed under §1(b) of the Trademark Act must be entitled to use the mark in commerce on the application filing date and must also have a bona fide intention to use the mark in commerce on the application filing date. Accordingly, your application under §1(b) should only be filed after you have established a bona fide intent to use the mark in commerce in the reasonably near future. If you are not the owner of the mark (or otherwise entitled to use the mark) as of the application filing date, or if you do not have a proper good faith intent-to-use the mark in commerce as of the application filing date, your application is void.

It is therefore important to carefully determine which entity has the bona fide intention to use the mark in commerce in order to correctly identify the Applicant. An application filed in the name of the wrong Applicant is defective and cannot be cured by an amendment or assignment.

For example, in one case, two individuals formed a partnership and together they had a bona fide intention to use a mark in commerce as of the filing date. However, because the trademark application was filed in the name of only one of the two individual partners as the Applicant, the application was void. (See Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999).)

Also, you should be aware that the USPTO trademark examining attorney typically will not ask you if the named Applicant is correct. This can result in a risky circumstance where a void trademark application eventually matures into a registration that is de-facto invalid.

Similarly, the USPTO trademark examining attorney that examines a §1(b) trademark application will also not typically evaluate the applicant’s good faith intent-to-use the mark in commerce. Instead, the USPTO relies on your sworn statement of a bona fide intent-to-use the mark. However, an Applicant’s good faith may later be challenged by a third party seeking to prevent registration or cancel registration of your mark in what is known as an inter partes proceeding.

What efforts and evidence should I document?

If your good faith intent to use the mark in commerce is challenged by a third party, you want to be able to provide credible evidence to establish that you did in fact have a bona fide intention to use the mark at the time your trademark application was filed, not just an intent to reserve a right in the mark. A lack of contemporaneous documentary evidence could be considered objective proof that you lacked a bona fide intention to use the mark in commerce at the time of filing the trademark application.

So what evidence should you be collecting and keeping? A fair amount, as it happens. Keep any documentation of business plans and marketing plans, steps to obtain manufacturers or distributors, your ability to produce the goods, R&D, licensing agreements, marketing or promotional materials, artwork or packaging for the goods, and/or steps to obtain government approvals. It’s best if these documents make explicit reference to the trademark and the goods and services listed in your trademark application. In one case, it was sufficient for the Applicant to document a business plan to find a licensee capable of bringing the goods to market. (See Lane Ltd. v. Jackson International Trading Co., 33 U.S.P.Q.2d 1351 (TTAB 1994).) In that case, the Applicant was able to demonstrate that he a history of successfully finding licensees.

If you are considering trademark protection for your brands, your best bet is to be aware of these important considerations and seek legal guidance. It is critical that your trademark application is filed properly, and that contemporaneous evidence of your efforts to make use of the mark is well documented. This is essential in order to avoid potential pitfalls and prevail against possible future challenges.

About the Authors

Pattric J. Rawlins

Pattric assists clients with many aspects of intellectual property law, including patent and trademark litigation as both plaintiff and defendant, as well as intellectual property counseling to protect and enforce patents, trademarks, copyrights, and trade secrets. Pattric also assists clients with licensing (inbound and outbound) of intellectual property assets. He focuses on counseling clients regarding procurement strategies for intellectual property assets and licensing programs for those same intellectual property assets. Pattric has extensive experience with software implemented technologies and strategic patent matters including accelerated patent applications, post grant patent matters including ex parte patent reexaminations, inter partes patent reexaminations, reissue patent applications and interferences. He leads Procopio’s Software practice .

Rosie focuses on all areas of intellectual property law. She prepares and prosecutes domestic and international patent applications across numerous technologies, including medical devices, consumer devices, image recognition technologies, ophthalmic formulations and devices, pharmaceuticals, and nutraceuticals. Beyond patent prosecution, she prepares, prosecutes and enforces global trademark portfolios, and represents clients in enforcing their intellectual property rights before the U.S. Patent and Trademark Office Trial and Appeal Boards. Rosie also handles transactional matters, including working with the Intellectual Property Team, the Native American Practice Group, and with the Real Estate and Environmental Team on issues regarding license and sale of IP assets, gaming, and cultural resource protection. Rosie has worked in-house as intellectual property counsel for a leading global musical instruments company.

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DOI: 10.1111/exsy.13693
Corpus ID: 272174728

Efficient malware detection using hybrid approach of transfer learning and generative adversarial examples with image representation

Yue Zhao , Farhan Ullah , +2 authors Saru Kumari
Published in Expert systems 13 August 2024
Computer Science

30 References

Explainability in ai-based behavioral malware detection systems, privacy-preserving federated learning approach for distributed malware attacks with intermittent clients and image representation, an ensemble-based machine learning-envisioned intrusion detection in industry 5.0-driven healthcare applications, cyber attacks via consumer electronics: studying the threat of covert malware in smart and autonomous vehicles, a review of detecting malware in android devices based on machine learning techniques, automated, reliable zero-day malware detection based on autoencoding architecture, nmal-droid: network-based android malware detection system using transfer learning and cnn-bigru ensemble, deep learning for zero-day malware detection and classification: a survey, iot-based android malware detection using graph neural network with adversarial defense, plausmal-gan: plausible malware training based on generative adversarial networks for analogous zero-day malware detection, related papers.

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COMMENTS

TMEP 501.01 (a): Assignability of Intent-to-Use Applications
501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant's business, or ...
Trademark applications
See TMEP sesction 1303.01 (a) (ii) for collective trademarks and collective service marks. If you have not used your mark in commerce yet, but have a good faith intention to do so in the future, you can file an application to register your trademark or service mark with an intent-to-use (ITU) filing basis.
Can A Trademark Applicant Assign An Intent-To-Use Application?
Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments, where important concepts such as the chain of title and recording an assignment are discussed. However, there are special rules for intent-to-use applications under §10 of the Trademark Act.
Assignment of Intent-To-Use Trademark Applications in USPTO
The United States Patent and Trademark Office ( USPTO) started to allow for the filing of "intent-to-use" applications in 1989. This means that applicants with a bona fide intent to use a given mark can begin the process of securing federal trademark protection concurrently with developing new business. However, before such an application ...
Trademark assignments: Transferring ownership or changing your name
Intent-to-use section 1(b) applications If you're transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use or a Statement of Use before you file your assignment.
Intent-to-Use TM Applications Usually Cannot Be Assigned
Similarly, if an ITU application is collateral, the secured party needs to be careful how it takes assignment of that collateral at foreclosure. One way to avoid this dilemma is in advance, form a new entity that will run that portion of the business related to the brand, and file an intent to use application in the name of that entity.
Can an Intent-to-Use Trademark Application Be Assigned?
The anti-assignment provision means it is not possible to assign an intent-to-use trademark before first filing either an amendment to allege use (AAU) or a statement of use (SOU). An AAU is possible only when the owner has actually used the mark in commerce or in connection with the goods or services named in the application. An applicant can ...
Is Your Trademark Application Assignment Proper? Intent-To-Use
If an AAU or SOU has not been filed, "the effect of assigning an intent to use application prior to filing a verified allegation of use is that both the assignment and the application is void." (See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §18:13, at 18-36 (5th ed. 2017) citing The Clorox Co. v. Chemical Bank, 40 ...
Section 1(b) timeline
Application based on intent to use your trademark in commerce. See current trademark processing wait times to estimate when your application will be assigned to the examining attorney. This timeline does not cover every scenario. If you are well outside the timeframes, call your assigned examining attorney at the phone number on the office action.
Intent to Use Trademark
Here is a timeline of what you can expect: Day 1: You file your Intent of Use trademark. 3 Months after filing: Your application is assigned to a USPTO examining attorney. 1 Month after assignment: Trademark is approved and published for opposition or an office action issues.
Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not
The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications. In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned ...
Be Wary of Pitfalls in Intent-to-Use Trademark Applications
05.22.14. Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications which started as ITU applications), such as improper assignment or lack of a bona fide intent to use the mark.
Trademark Assignments & Intent-To-Use Applications
This page will cover issues involving trademark assignments and intent-to-use applications. If a trademark application is filed under Section 1(b) of the Trademark Act, there are different rules for assigning applications based on whether or not the Applicant has commenced use of the mark in commerce with the goods or services identified in the ...
PDF Assigning intent-to-use- based applications
assignment of the underlying applica - tion was improper. The decision high - lights the need for parties to give spe - cial consideration to the manner in which the assignment of intent-to-use-based trade mark applications are treat-ed when structuring corporate transac - tions. The application for the Zilla mark had been filed on an intent-to ...
Assignments of intent-to-use applications will be closely ...
Assignments of intent-to-use applications will be closely scrutinized. Emerald Cities Collaborative, Inc. v. Roese, No. 2016-1703, 2016 WL 7210145 (Fed. Cir. Dec. 13, 2016) (not precedential) The ...
Is Your Trademark Application Assignment Proper? Intent-To-Use
If an AAU or SOU has not been filed, â€œthe effect of assigning an intent to use application prior to filing a verified allegation of use is that both the assignment and the application is void.â€ (See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Â§18:13, at 18-36 (5th ed. 2017) citing The Clorox Co. v. Chemical ...
Federal Circuit: Assignments of Intent-to-Use Applications Will be
The Federal Circuit's recent decision in Emerald Cities Collaborative, Inc. v. Roese provides a reminder that any agreement to assign a pending intent-to-use trademark application will be closely scrutinized to determine whether the transfer violates the statutory prohibition against trafficking in inchoate marks.
Assignment of Intent-to-use Trademark Applications
The Trademark Act Section 10 (a) (1) clearly states that an intent-to-use application cannot be assigned "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.". In the recent Trademark Trial and Appeal Board case, Cent.
Intent to use (ITU) forms
Statement of Use/Amendment to Allege Use for Intent-to-Use Application . Use this form only if you have already filed the initial Trademark/Servicemark Application based on an intent-to-use the mark in commerce under Section 1(b). Before we will register a mark based upon a bona fide intention to use the mark in commerce (i.e., the applicant ...
Should You File an Intent-to-Use Trademark Application?
There are two ways to qualify as a first user of a trademark: intent to use—the first to file an intent-to use application with the U.S. Patent and Trademark Office provided that (1) the applicant files the application before the trademark is actually used by another party and (2) the applicant later puts the mark into actual use and ...
Can I Assign a Trademark Application?
An application cannot be assigned if it was filed on an intent to use basis, and neither a Statement of Use or Amendment to Allege Use have been filed. If such an assignment is made, even if a registration is obtained it will be subject to cancellation . There is a very good reason why such assignments are prohibited.
Premature Assignment of Intent-to-Use Application Voids that ...
The respondent -- while noting that the application was assigned -- nevertheless argued that the intent of the parties, when executing the assignment, was to create a security interest; that the prohibition against assigning intent-to-use applications is to prevent trafficking; that respondent retained a bona fide intention to use the mark ...
Is Your Intent Bona Fide? Intent-To-Use Trademark Applications, Part
Accordingly, your application under §1 (b) should only be filed after you have established a bona fide intent to use the mark in commerce in the reasonably near future. If you are not the owner of the mark (or otherwise entitled to use the mark) as of the application filing date, or if you do not have a proper good faith intent-to-use the mark ...
Efficient malware detection using hybrid approach of transfer learning
The Deep Convolutional Generative Adversarial Network for Zero‐Shot Learning (DCGAN‐ZSL) is introduced, leveraging transfer learning and generative adversarial examples for efficient malware classification, and the ZSL for zero‐day malware presents a novel method for identifying previously unknown threats. Identifying malicious intent within a program, also known as malware, is a ...