It is a commonly overlooked problem. A person comes up with a new product to bring to market and has the foresight to file an “intent-to-use” U.S. trademark application for the mark XYZ to be used with his new product. Then, before actual use is established, in an effort to get organized, the person sets up a company and assigns all rights, title and interest to the pending trademark application for the mark XYZ to his company. The trademark XYZ eventually becomes registered with the U.S. Patent and Trademark Office (“USPTO”) and is integrated into a portfolio of marks that the company subsequently develops. Now, the company is offering to sell the trademarks to you. Here is something to watch out for when evaluating the portfolio.
Generally speaking, it is problematic to assign an “intent-to-use” trademark application except to the successor of the business that owns the trademark application. See 15 U.S.C. § 1060
and TMEP § 501.01(a)
. The USPTO does not want people trafficking in trademarks that have not been used in commerce. In the above example, the individual prematurely assigned his “intent-to-use” XYZ trademark application to his company and as a result, rendered his trademark registration void and subject to cancellation.
What could the individual have done in the above example? He could have filed the application in his company’s name or waited until he had established use before he assigned the application. Pay close attention to trademarks that originate from individuals versus companies and make sure that the proper steps were followed or face the possible consequence of buying an unenforceable trademark registration.