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Jan/13

Hi Di Ho: SDNY Interprets Section 10 of Lanham Act (No Assignment of pre-use ITU Without Transfer of On-going Business)


Section 10 of the Lanham Act prohibits assignment of an ITU application prior to the filing of proof 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.” This is intended to prevent trafficking in names (you know, what the domain name business is). We’ve discussed Section 10 before.

Defendant (pictured above) is Cab Calloway’s grandson. Plaintiff is an entity intending, in part, to market the Cab Calloway name. Defendant successfully opposed plaintiff’s ITU application before the TTAB, based on his prior usage. Plaintiff appealed to the SDNY, relying on its prior ITU filing date. In the de novo review, defendant challenged the pre-use assignment of the ITU from the original applicant (Calloway’s widow) to plaintiff.

Plaintiff enumerates various activities ‘concerning’ the mark undertaken by original applicant prior to the assignment, some of which could be characterized as ‘administering’ the mark (such as allowing the use of the mark by a music school). Plaintiff alleged that it was a successor to these ‘activities.’

Held (on summary judgment): no jury could find that the activities were organized as an ongoing business, such that there was a transfer of an ongoing and existing business to plaintiff.

Property, intangible discussion here
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cab calloway TM SJ decision