• Well, It Was Probably Assigned

    by  • April 30, 2009 • trademark

    The TTABlog reports on a case about the mark RUSSKAYA for vodka that addresses two different attacks on trademark ownership. One is a fairly standard charge of abandonment. The second is a standing attack, based on a claim that the intent to use trademark application was improperly assigned.

    Under Section 10(a)(1) of the Lanham Act, an intent to use trademark 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.” As pointed out at the TTABlog, the TTAB seemed a bit lax in requiring adequate proof that there was an assignment of the ongoing business, particularly because the proof of record was titled “Trademark Assignment.” The Trademark Assignment referred to an “Asset Purchase Agreement” dated a few weeks earlier, but the TTAB had stricken the Asset Purchase Agreement because it wasn’t timely filed.

    The TTAB nevertheless held that “we cannot conclude on this record that the assignment of the ‘600 RUSSKAYA application did not comply with the requirement of Trademark Act Section 10(a)(1)” because “specific reference to an expansively-titled ‘Asset Purchase Agreement’ suggests that the assignment of the RUSSKAYA application was merely part of a broader assignment of A.V. Imports, Inc.’s business.” (Emphasis added.) The TTAB contrasted this situation to The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996), where, as had been common practice, the assignment was to secure a loan and expressly not a transfer of the business. Note the burden-shifting; between this and accepting a “suggestion” that more than the trademarks were assigned, the attack was readily fended off.

    It may have been a pragmatic decision in two ways – first, there was probably little doubt that the assignee could have proven that the ongoing business was assigned (particularly since the TTAB could look at the Asset Purchase Agreement). Second, it now looks like a challenger has to prove that the ongoing business was not assigned, rather than the assignee proving that it was. That’s one way to reduce the number of arguments that need to be decided in future cases.

    TTABlog post here. A.V. Brands, Inc. v. Spirits Int’l, B.V., Opp. No. 92043340 (March 31, 2009).

    © 2009 Pamela Chestek