USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark An assignment must be in writing and signed, and identify: • the parties; • the marks assigned (application or registration numbers, if applicable); and • the effective date. An assignment must include the goodwill of the busi - ness associated with the mark. An assignment without goodwill is “in gross” and may invalidate the trade mark. Assignment of an intent to use application is not allowed except to a successor to the applicant’s busi - ness, or portion of the business to which the mark pertains, if that business is ongoing and existing (15 USC § 1060). Partial assignments of trade marks are permitted. For example, a trade mark owner may assign one class of goods/services to another. The PTO will not conduct a substantive review, and recording of an assignment is not an indication of validity. Copyright Assigning a copyright involves transferring ownership rights. An assignment must be in writing and signed by the owner of the rights being assigned. The agreement must clearly indicate the scope of the rights being transferred and whether it is a full or partial assign - ment. A copyright may be bequeathed or passed by intestacy at death. The Copyright Act permits authors or their heirs, under certain circumstances, to terminate the transfer or licence of a copyright. These termination provisions are set forth in 17 USC §§ 203, 304 (c) and 304 (d), and generally require the author to serve a “notice of termination” on the grantee and record it with the
which both the applicant and the examiner submit arguments. If the TTAB rules against the applicant, the applicant can then appeal the decision to Federal Circuit. Alternatively, an aggrieved party is also able to appeal by filing a civil action in a federal district court to review the decision of the TTAB on an open record de novo with the opportunity to submit new and additional evidence. In the case of opposition or cancellation actions, if a party wishes to appeal, the party may appeal to the Federal Circuit on a closed record or file an appeal in federal district court on an open record as above. It is important to caution that the deadlines to file appeals are strict and complex. The failure to timely submit cannot be cured by a late filing. 5.6 Amendment in Revocation/Cancellation Proceedings Amendments of an application or registration are possible in an opposition or cancellation proceeding; however, these amendments generally must be made with consent of the other party. 5.7 Combining Revocation/Cancellation and Infringement A trade mark cancellation action can be adjudicated together with an infringement claim in federal court (or as part of an opposition process in the TTAB). A cancellation action cannot be a standalone basis on which to assert a claim in federal court, but it can be a supplemental claim or counterclaim in federal court. The claims generally are considered at the same time by the same tribunal. 5.8 Measures to Address Fraud There is no specialised process for the cancellation of fraudulently filed trade marks. However, an applicant who seeks to cancel a fraudulently filed registration can: (1) petition to cancel/oppose the mark based on fraud, (2) file an expungement proceeding, or (3) file a re-examination petition. See 5.2 Legal Grounds for Filing an Opposition or Cancellation . There is no USCO adversarial procedure to address copyright fraud.
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