• Posts Tagged ‘intent-to-use’

    I Think I Heard the Phone Ringing …

    by  • December 15, 2016 • trademark • 0 Comments

    John Welch put in the call, and I’ll pick up. If you didn’t read his post on Emerald Cities Collaborative, Inc v. Roese, go read it now. Section 10 of the Lanham Act limits the assignability of intent-to-use trademark applications. One can assign an ITU application only after the Amendment to Allege Use or...

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    Update: All the Wrong Reasons

    by  • October 20, 2016 • trademark • 0 Comments

    Update: I previously reported on Sebastian Brown Prods. LLC v. Muzooka Inc., a fairly routine trademark priority dispute with a troubling holding. In it, the district court wrote out the last sentence of Section 10 of the Lanham Act, essentially holding that an intent-to-use application cannot be assigned until the trademark is in use....

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    All the Wrong Reasons

    by  • July 11, 2016 • trademark • 2 Comments

    In a recent Trademark Reporter Commentary, I went on a tirade about a two district court cases that, in my view, misinterpreted Section 10 of the Lanham Act. Section 10 generally prohibits assignment of intent-to-use applications “except for an assignment to a successor to the business of the applicant, or portion thereof, to which...

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    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...

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    What Is an “Ongoing and Existing” Business?

    by  • January 2, 2013 • trademark • 2 Comments

    Section 10 of the Lanham Act has what’s called an “anti-trafficking” provision, which prohibits the assignment of intent-to-use applications “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 provision was added by the Trademark...

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    Mind Your Licenses

    by  • December 27, 2012 • trademark • 0 Comments

    Mind your licenses – if you want the mark to remain valid, it behooves you to comply with the terms of the license. Non-party Ansell Incorporated, later called Ansell Healthcare Products (Ansell), owned the mark CONDOM SENSE for prophylactics, claiming first use in 1988. In 1992, it filed an intent-to-use application for the mark...

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    An Embarassment of Ownership Issues

    by  • October 10, 2011 • trademark

    Opposed mark TTAB decision Restifo v. Power Beverages, LLC has, count ’em, seven different trademark ownership theories discussed in it. My kind of case. In 2006 opposer Restifo and trademark applicant Kidd first discussed a business arrangement for making YING YANG VODKA.  Kidd described his method of doing  business this way: s an alcohol...

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    When Can You Assign an Intent-to-Use Application?

    by  • September 28, 2010 • trademark

    Test your knowledge of Section 10 of the Lanham Act!  Here’s the set-up:  Joint owners file an intent-to-use application.  One owner assigns the mark to the other before the mark is used.  Improper assignment of an intent-to-use application or not? TTABlog has the answer. The text of this work is licensed under a Creative...

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    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...

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