Assignment of an ITU

Posted by . updated on 11/11/2009
I understand that assignment of an ITU is not possible unless a SOU or Allegation of use has been filed, EXCEPT if the business is merged or bought or the assets associated with the mark are bought in entirety.

Question:  If the mark is in the individual's name, not the company of that individual, and another company seeking to acquire the ITU application and buy the associated goods from the company, does the acquiring company have a problem? 

Seems to me that the individual would have to assign the mark to the company BEFORE the acquiring company can receive the mark.

I may be making it more complicated than it is.  I just thought that if the acquiring company is receiving a mark and seeks to receive the mark under this exception of acquiring the business, the goods or assets acquiring and the mark SHOULD be from the same entity and not from the individual and company.

Any thoughts?

Regards,

Answers (3)
 
JSonnabend
If the individual who is the applicant has a company, and it is that company that has the intent to use, why has the individual filed and not the company?  Certainly, a conservative COA would be to have the individual assign the ITU to his company before anything else is done.

- Jeff
 
 
TataBoxInhibitor
That is a good question.  I am not sure, but I am stuck with the facts.  Does an individual assigning the mark to his newly created company fall within this "business exception" to the anti-trafficking prohibition?  It is a tough question, one which I have not seen in my research.  My guess is you could say the individual and the newly created company "merged," or the individual assets were acquried by the newly formed company.  Then the acquiring company could acquire that company.

McCarthy does not really discuss this scenario.

Regards,
 
 
JSonnabend
The situation where an individual applies for a registration based on ITU and then assigns the ITU to a business entity that will operate the business is common.

- Jeff
 

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I understand that assignment of an ITU is not possible unless a SOU or Allegation of use has been filed, EXCEPT if the business is merged or bought or the assets associated with the mark are bought in entirety.

Question:  If the mark is in the individual's name, not the company of that individual, and another company seeking to acquire the ITU application and buy the associated goods from the company, does the acquiring company have a problem? 

Seems to m...