Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications which started as ITU applications), such as improper assignment or lack of a bona fide intent to use the mark. We review the case law highlighting these issues and provide practice pointers to address these issues.

Background: In the United States, one can file an intent-to-use (ITU) application, in effect reserving the mark and establishing a constructive priority date before the mark is actually used in commerce. The U.S. Patent and Trademark Office (USPTO) will not register an ITU application until the applicant files proof that it is using the mark in commerce. The applicant may do so in the form of an amendment to allege use before the Trademark Examiner approves the mark to be published for opposition, or in the form of a statement of use after the mark survives the opposition period and a Notice of Allowance is issued. An applicant has up to three years from the date of the Notice of Allowance to file a statement of use (SOU) to represent the mark is being used.