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
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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