Premature Assignment of Intent-to-Use Application Voids that Application and any Resulting Registration


Trademark law protects the public by protecting a company's ability to clearly identify itself through the use of unique marks on their products. This protection prevents confusion in the marketplace regarding the origin of the products sold. Trademarks protection is deeply impacted by the registration status of the mark at issue. Although a registered mark can receive protection and an unregistered mark cannot, there has been confusion regarding whether marks that are subject to a pending registration application are eligible to be protected under the law. The following article looks at this predicament and the critical legal impact of the timing of litigation.

The Trademark Act

Designed to prevent "trafficking" in trademarks, Section 10 of the Trademark Act, 15 U.S.C. ยง1060, prohibits the assignment of an intent-to-use trademark application before a party has filed an acceptable amendment to declare use or statement of use of the mark (except to the successor to the business of the trademark applicant, or to the successor to that portion of the business with which the trademark will be used). The act further requires that the business, or the portion thereof assigned, must be ongoing and existing.

The Clorox Case

In a case of first impression, the Trademark Trial and Appeal Board recently addressed the ramifications of premature assignment of an intent-to-use application in The Clorox Company v. Chemical Bank, U.S.P.Q. (TTAB 1996). In Clorox, the petitioner sought to cancel a registration, claiming that the underlying intent-to-use application was prematurely assigned. The respondent -- while noting that the application was assigned -- nevertheless argued that the intent of the parties, when executing the assignment, was to create a security interest; that the prohibition against assigning intent-to-use applications is to prevent trafficking; that respondent retained a bona fide intention to use the mark; that inasmuch as the parties intended to create a security interest, the activity which Section 10 was designed to prohibit was not present; that the intent of the parties, not the form of the "assignment" document, should prevail; and that, accordingly, cancellation of the registration was inappropriate. Moreover, the respondent pointed out that Section 10 of the Trademark Act does not stipulate the penalty for a premature assignment of an intent-to-use application, and argued that in this case -- where the parties were not engaged in trafficking -- the penalty should entail invalidating that assignment not canceling the trademark registration.

The board, however, rejected the respondent's arguments. Strictly interpreting the Section 10 prohibition, it noted that the respondent's trademark agreement did in fact constitute an outright assignment. Regarding the respondent's arguments about the appropriate penalty for premature assignment, the board found that Congress' purpose in drafting Section 10 was to prevent trafficking. After reviewing the legislative history of the statute, it concluded that Congress intended for prematurely assigned intent-to-use trademark applications, as well as any resulting registration, to be voided. Thus, the respondent's registration was canceled.

As such, those seeking to establish and use trademarks should exercise caution in the timing of license agreements, lest they lose the ability to seek enforcement and find themselves without recourse on account of their premature assignment.