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James D. Crosby, Attorney at Law. Complex and General Business Litigation and Trial Representation. San Diego, California. O: (619) 450-4149 C: (858) 705-0083 Email: crosby@crosbyattorney.com

A Business May Not Assign (an ITU Application), if the Assign(or) Has No Business

James D. Crosby, Attorney at Law - Complex and General Business Litigation and Trial Representation - San Diego, California

Another interesting post from my partner, Doug Lytle. This time on Assignment of Intent-to-Use (ITU) Trademark Applications. Follow his blog, Takes on Law. Always interesting and timely. Jim

Takes On Law

There’s an old saying: “A business with no sign is a sign of no business.”

In a recent dismissal order, the Northern District of California provided insight into the requirements for assigning an Intent-to-Use (ITU) trademark application when the assignment occurs before proof of actual use of the mark is filed with the USPTO.

Some use of a mark, sufficient to accrue some goodwill, is required before an Intent-to-Use trademark application may be assigned to another. 

This is a very important concept, because it can arise in many contexts, including:

  • two companies develop a similar new product both seek to use the same mark, and they resolve the conflict with an assignment of a pending ITU application;
  • assignments between related companies;
  • an individual files an application in his or her personal name instead of or before forming a corporate or other entity (discussed below); and
  • M&A transactions involving IP portfolios that include…

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