Trademark Assignments

In 2008, the TTAB decided two cases in which this issue was discussed.In , 2008 WL 8973295 (TTAB 2008), the TTAB stated that a business is “ongoing and existing” only if the Applicant is already providing the goods or services recited in the application.

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Rosie Kim is an Associate at Procopio and a member of its Intellectual Property team.

Her practice focuses on all areas of intellectual property law.

With respect to transfers to a successor of an existing and ongoing business, the TTAB has provided some guidance on what constitutes an “ongoing and existing” business connected with the mark.

Since intent-to-use trademark applications are generally filed prior to establishing use in commerce, it is important to know what level of use is sufficient.

If an AAU or SOU has not been filed, “the effect of assigning an intent to use application prior to filing a verified allegation of use is that both the assignment and the application is void.” (See J.

Thomas Mc Carthy, Mc Carthy on Trademarks and Unfair Competition, §, at 18-36 (5th ed.

Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement, as here, the entirety of the mark is being transferred to a new party.

Section 10(a)(1) of the Lanham Act, commonly referred to as the anti-assignment or anti-trafficking provision, provides that no intent-to-use trademark application can be assigned prior to filing an amendment to allege use or a statement of use, except to a successor of the ongoing and existing business, or portion thereof, connected with the mark.

An amendment to allege use (AAU) or statement of use (SOU) is a submission to the USPTO in which the applicant provides a specimen or example showing how the trademark is being used in connection with selling the goods or services listed in the trademark application, along with a statement that the specimen was in actual use in commerce by a specified date.

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