Trademark ownership is sometimes an easy aspect of a trademark application to overlook—especially for pro se applicants. A pro se applicant is an applicant that files their trademark without the counsel of an attorney. As a result, incorrect trademark ownership is one of the most common mistakes pro se applicant makes—and is likely fatal. Regardless of how long a trademark has been registered incorrect ownership at any point is disastrous.
Ownership errors can create a litany of problems in the future and may profoundly impact past, present, and future rights. Regarding ownership information, the TMEP provides several examples of correctable and uncorrectable ownership errors.
Examples of Uncorrectable Ownership Errors
First and foremost, an amendment can not correct an application filed in the name of the wrong party. Such applications are void from the beginning. Regardless of how long the mark has been used in commerce. Even worse, a trademark examiner won’t tell you if the ownership information is correct or not.
However, the TMEP in Section 1201.02(c) provides several other examples of uncorrectable errors that result in a void mark.
- President of Corporation Files as Individual. Suppose the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application). In that case, the application is void as filed because the applicant is not the owner of the mark.
- Predecessor in Interest. An application filed in the name of entity A, when the mark was assigned to entity B before the application filing date is void. This is because the applicant was not the owner of the mark at the time of filing.
- Joint Venturer Files. If the application is filed in the name of a joint venturer when the mark is owned by the joint venture, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a joint venture in the entity section of the application), the applicant’s name cannot be amended. Tong Yang Cement, 19 USPQ2d at 1689.
- Sister Corporation. Suppose an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark. In that case, the application is void as filed because the applicant is not the mark’s owner.
- Parent/Subsidiary. If an application is filed in the name of corporation A, a wholly owned subsidiary, and the parent corporation (corporation B) owns the mark, the application is void. This is because the applicant is not the owner of the mark.
Examples of Correctable Ownership Issues
- Trade Name Set Forth as Applicant. An applicant can file an amendment to correct ownership when the applicant identifies itself by a name under which it does business, which is not a legal entity. Cf. In re Atl. Blue Print Co., 19 USPQ2d 1078.
- Operating Division Identified as Applicant. If the applicant mistakenly names an operating division then the applicant’s name may be amended. See TMEP §1201.02(d).
- Minor Clerical Error. Minor clerical errors such as the mistaken addition or omission of “The” or “Inc.” in the applicant’s name may be corrected by amendment. However, this is as long as it does not result in a change of entity.
- Inconsistency in Original Application as to Owner Name or Entity. Suppose the original application reflects an inconsistency between the owner name and the entity type, for example. Accordingly, both the individual and the corporation are the owner of the mark. Accordingly, an amendment will clarify the inconsistency.
- Change of Name. If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected. This is because the correct party filed, but merely identified itself incorrectly. In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982).
- Partners Doing Business as Partnership. If an applicant has been identified as “A and B, doing business as The AB Company, a partnership,” and the true owner is a partnership organized under the name The AB Company and composed of A and B, the applicant’s name should be amended to “The AB Company, a partnership composed of A and B.”
- Non-Existent Entity. If the party listed as the applicant did not exist on the application filing date, the applicant’s name needs to be corrected.
Overall, the importance of listing the correct ownership information in a trademark application is critical. It is just one of the benefits of utilizing an experienced trademark attorney. Don’t fall for the promise of a cheap and easy trademark process by a “trademark mill.” While applications may be “reviewed” by an attorney, that attorney will never have a personal relationship with their clients to ensure they are protected on all fronts. As a result, it is critical for the survival and long-term success that you speak with an experienced trademark attorney who can provide you with expert guidance on how best to protect your band. Your trademark attorney should be a counselor of law, not just an attorney.
Generally, the owner of a trademark application should be the person or entity receiving the funds from the sale of the branded goods or services under the mark.
It depends on the issue being corrected. In particular, an application filed in the name of the wrong party cannot be corrected by amendment.
Generally, no. The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record. Except when the reference to another party clearly contradicts the applicant’s verified statement.
Obtaining a registered trademark typically takes 8 – 10 months. However, filing an intent-to-use trademark will typically extend this timeline.
Yes. Utilizing the experience of a trademark attorney helps ensure protection of your brand from the beginning.