Trademark Review - Volume 3 | Issue 9 September 2013


In This Issue:

• Beware of The “Simple” Assignment of Intent to Use Applications to an Affiliate

• TTAB Reverses the Refusal to Register BITES OF BOSTON

• Updates on Registration of New Generic Top-Level Domains

- Excerpt from Beware of The “Simple” Assignment of Intent to Use Applications to an Affiliate:

Central Garden owned registrations for the mark ZILLA for goods that include pet food, pet treats, and aquariums. Central opposed Doskocil’s applications and sought cancellation of Doskocil’s registration for marks that include DOGZILLA for dog toys. In addition to denying the allegations of likelihood of confusion, Doskocil brought counterclaims to cancel Central’s registrations. Doskocil petitioned to cancel Central’s earliest ZILLA registration on the basis that the intent-to-use application underlying that registration was improperly assigned prior to the filing of a statement of use.

Applications filed on the basis of an applicant’s intent to use a mark are not assignable prior to filing an amendment to allege use of the mark in commerce, unless the assignment is “to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” Trademark Act §1 (a)(1); 15 U.S.C. §1060(a)(1)...

Please see full Review below for more information.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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