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Author Topic: Intent to Use of an IP holding company?  (Read 372 times)

mersenne

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Intent to Use of an IP holding company?
« on: 06-28-17 at 12:44 pm »

Can the owner of an IP holding company have an intent to use a mark?

Suppose someone wants to set up Acme Inc to run a business, and Acme IP Inc. to own the patents & trademarks used by Acme Inc.  He wants to register FooBar for a product that Acme is going to sell, but he wants the mark to be owned by Acme IP.  Can he, as CEO of Acme IP, sign the intent-to-use statement?

Or does Acme Inc. have to file the ITU application, and assign it to Acme IP (with a license back) once the application is allowed & registered?
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

mersenne

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Re: Intent to Use of an IP holding company?
« Reply #1 on: 06-28-17 at 07:26 pm »

Slightly old, but relevant:

https://blog.lrrc.com/ip/2013/08/29/intra-corporate-trademark-transfers-beware-of-the-intent-to-use-trap/

I've gotten feedback that "if there's any possibility of a change of ownership or control, don't file an ITU application!"  That makes good sense, since problems of intent can show up to bite you long after you think everything is settled down.  If I had to advise Acme, I'd probably recommend the second option: Acme Inc. files the ITU, and once it's in business with a completed registration, it can transfer and license back.
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

MYK

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Re: Intent to Use of an IP holding company?
« Reply #2 on: 06-28-17 at 10:35 pm »

Is it still possible to set up an Irish corporation and "license" the IP from it to avoid taxation?  Or did they close that loophole?
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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