Not the Rightful Owner of the Mark - Invalid Assignment of Intent to Use Application



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  • An "assignment" is defined as a transfer or making over to another the whole of any property.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • An "assignment" is defined as "[a] transfer or making over to another the whole of any property …" (emphasis supplied). Black's Law Dictionary 62 (5th ed. abridged 1983); see also, 6 Am. Jur. 2d Assignments § 1 (2010).
  • Where an individual owned the mark at the time he mailed the application asserting himself as the owner, but, by the time of receipt by the USPTO, his corporation came into existence and, by its terms assumed ownership of the mark and application. The Court concluded that the application was void because on the filing date the proper owner was the corporation.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • FOOTNOTE 11 "Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) is inapposite. In that case, an individual owned the mark at the time he mailed the application asserting himself as the owner. But, by the time of receipt by the USPTO, his corporation came into existence and, by its terms assumed ownership of the mark and application. The Court concluded that the application was void because on the filing date the proper owner was the corporation. Unlike in Huang, in the case before us the original joint applicants were the owners of the application at the time it was filed and the assignment at issue occurred long after the filing date."
  • The terms ‘joint applicant(s)' or ‘joint owner(s)' reflects the relationship of multiple applicants as to a particular mark, but does not identify a particular type of legal entity in the United States.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • FOOTNOTE 12 ""The terms ‘joint applicant(s)' or ‘joint owner(s)' reflects the relationship of multiple applicants as to a particular mark, but does not identify a particular type of legal entity in the United States." TMEP § 803.03(d) (6th ed. 2010)."
  • Assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application, is more in the nature of a relinquishment of ownership rights by one of the joint owners than a true assignment to a different legal entity and, thus, it is not prohibited under Section 10.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • In short, the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application, is more in the nature of a "relinquishment" of ownership rights by one of the joint owners than a true "assignment" to a different legal entity and, thus, it is not prohibited under Section 10 of the Trademark Act.
  • Case Finding: In this case, there was no transfer to "another," as Mr. Wax was an original joint applicant and is now the sole remaining applicant. In fact, the "Trademark Assignment" in this case was more akin to a change in the type of entity which owned the application than to a traditional assignment of a mark from one unrelated party to another.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • In this case, there was no transfer to "another," as Mr. Wax was an original joint applicant and is now the sole remaining applicant.11 In fact, the "Trademark Assignment" in this case was more akin to a change in the type of entity which owned the application than to a traditional assignment of a mark from one unrelated party to another.12
  • The assignment of a §1(b) application to an entity that is not the successor to the applicant's business, before filing an allegation of use, renders the application and any resulting registration void.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • The assignment of a §1(b) application to an entity that is not the successor to the applicant's business, before filing an allegation of use, renders the application and any resulting registration void. See The Clorox Co. v. Chem. Bank, 40 USPQ2d 1098 (TTAB 1996).
  • There is no "trafficking" in the mark where the sole owner of the application after the assignment was an owner of the application before the assignment.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • There is no "trafficking" in the mark herein, where the sole owner of the application after the assignment was an owner of the application before the assignment.
  • Under Section 10, no application under Section 1(b) "shall be assignable prior to the filing of an amendment to allege use or statement of use 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.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • Under Section 10, 15 U.S.C. § 1060(a)(1), no application under Section 1(b) "shall be assignable" prior to the filing of an amendment to allege use or statement of use "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."
  • Under Trademark Act §10, an application filed under §1(b) may not be assigned before filing an allegation of use, except to the successor to the applicant's business, or portion of the business to which the mark pertains, if that business is ongoing and existing.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • Under Trademark Act §10, an application filed under §1(b) may not be assigned before filing an allegation of use (i.e., either an amendment to allege use or statement of use), except to the successor to the applicant's business, or portion of the business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; Trademark Manual of Examining Procedure (TMEP) §501.01(a) (6th ed. 2009).
  • The purpose of Section 10 is to prevent the trafficking in marks which are the subjects of intent-to-use applications.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010)
      • We further note that the purpose of Section 10 is to "prevent the trafficking in marks which are the subjects of intent-to-use applications." The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098, 1104-06 (TTAB 1996).
Amazon Technologies, Inc. v. Jeffrey S. Wax, Opposition No. 91187118 (TTAB 2010) Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010) Grand Total
The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996) 2
Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) 1
Grand Total 2 1 3
No Statutes Listed