• Yeah, What He Said

    by  • August 21, 2013 • trademark • 0 Comments

    If you think that there is any way around the prohibition in Section 10 of the Lanham Act restricting the assignment of intent-to-use applications,* just give up on the idea. The registrant in Central Garden & Pet Co. v. Deskocil Manufacturing Co., having assigned intent-to-use applications from a wholly-owned grandchild subsidiary up to the parent, tried every argument and none succeeded.

    It’s not “hypertechnical” to prohibit the transfer of ITU applications in the same way that use-based applications and registrations can be transferred; the statute expressly treats ITU applications differently. The “goodwill” in a mark is not the same thing as “the business … or a portion thereof” because goodwill is always transferred, so the Section 10 requirement must mean something more. A transfer between a subsidiary and a parent is not equivalent to an assignment from one co-owner to another; “the existence of a corporation cannot be turned on or off at will to suit the occasion.” And finally, it doesn’t matter that the transfer in question is not one that Congress was concerned about, “while applicant might be of the opinion that Congress employed a larger hammer than necessary too hit that particular nail, we are not in the business of rewriting statutes to more narrowly effect what we suppose might have been Congress’ intention.”

    John Welch at the TTABlog has the full scoop on the assignment, and more.

    *

    [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.

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