licensing ITU, assigning ITU, or neither

[rowlander]

My friend and I filed an ITU-based trademark application. We are co-owners. We intend to form a business and then license a third party to make and sell the goods for us. We would own and control the business together. We are not selling goods as individuals, so we cannot submit our statement of use. We need a the third party to make and sell the goods for us. How do we properly transfer rights to the ITU application to the business that we will form. We want the business to license with the third party, not us as individuals. We would retain control of the marks, not the third party.

As I understand it, assigning the ITU-based mark can be problematic. My thoughts are to license use of the mark to the business along with the right to sublicense. Once that's executed, the business would license use of the mark to the third party who would make and sell goods for us. Once goods are sold, we could submit our statement of use so the mark will register. After registration, we could assign the mark from us as co-owners over to the business. Would that work, or is there a more straightforward solution?

[JSonnabend]

The fact that you are having a third party manufacture the branded goods for you is not an issue.  These days, almost everything I see professionally is contract manufactured in China.

Transferring an ITU application from you two as individuals to a business entity (when it is formed) is also a non-issue.  The Lanham Act allows for assignment of ITU's in those circumstances.

Finally, you can file your SOU when you ship your first branded product in interstate commerce, and perhaps even upon receipt of your first shipment from the factory if certain criteria are met.

- Jeff