intent-to-use
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Getting Back on the Rails
I have written extensively in the past about what I consider a misapplication of the anti-trafficking provision of Section 10 of the Lanham Act. Section 10 has a special provision that limits when one can assign an intent-to-use trademark application. After the 1989 amendment to the Lanham Act, companies could file trademark applications before actually […] Continue reading
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I Think I Heard the Phone Ringing …
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 the […] Continue reading
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Update: All the Wrong Reasons
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. As […] Continue reading
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All the Wrong Reasons
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 the […] Continue reading
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Yeah, What He Said
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, […] Continue reading
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What Is an “Ongoing and Existing” Business?
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 Law […] Continue reading
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Mind Your Licenses
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 CONDOM […] Continue reading
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Questionable Decision on Assigning an ITU
I recently wrote about a case which held that, while there was an assignment of an invention, a continuation-in-part application was not assigned because it had new matter. I’m not sure if the outcome was right; at least I suspect that many drafters of assignment language haven’t thought about it that way. The same decision […] Continue reading
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An Embarassment of Ownership Issues
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: [a]s an alcohol beverage, […] Continue reading
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When Can You Assign an Intent-to-Use Application?
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 Commons […] Continue reading
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