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ARTICLE · 27 AUGUST 2013

Petzilla vs. The Trademark Registration: Beware The Improper Assignment Trap

Fox Rothschild LLP
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Intent-to-use (ITU) trademark applications can give companies the opportunity to reserve valuable trademark rights before actually using the mark in commerce.

United StatesIntellectual Property
James Singer
James Singer
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Intent-to-use (ITU) trademark applications can give companies the opportunity to reserve valuable trademark rights before actually using the mark in commerce. However, ITU applications do have certain limitations – including restrictions on assignment.

In many cases, U.S. trademark law imposes few conditions on assignment of trademark registrations and applications. However, in the case of ITU applications, Section 10(a)(1) of the Lanham Act states that ITU applications may not be assigned before the applicant files a statement of use, unless the assignment is "to a successor to the business of the applicant, or portion thereof, to which the mark pertains." This means that ITU applications can be assigned only in those situations that also involve a "successor," and not merely to any buyer.

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