Who Should Own My Trademark? (3 Fatal Mistakes to Avoid)
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The worst mistake you can make in filing your trademark application may be to list yourself as the trademark owner! So, let’s explore the question of “who should own my trademark.”
Under Section 1201.02 (b) of the Trademark Manual of Examining Procedure (TMEP), an application can be void or invalid if it doesn’t list the correct owner. Depending on the circumstances, identifying the wrong person or entity as the owner of your intellectual property on an application may be a mistake that cannot be corrected.
Ultimately, this type of mistake can make your trademark registration invalid.
An application must be filed by the party who owns (or is entitled to use) the mark as of the application filing date. As per the TMEP S1201, any trademark registration resulting from a void application is invalid.
Fatal mistakes in trademark ownership
“Incorrect ownership” can happen in a few different ways when doing your trademark filing in the USA; examples of different scenarios are below:
Example 1: the partnership pitfall
In American Forests v. Sanders, a trademark application was filed by an individual listing her personal name as the trademark owner. This is an excellent example case citing the importance of correctly navigating your trademark rights.
The issue was that the trademark would be used by a business where she’d be co-founder with her husband. This means that while she was a rightful owner, there was more than one correct owner.
The court ruled that the trademark application was invalid. Both individuals in the partnership should have been listed as trademark owners.
For example, suppose the business that will use the trademark is a partnership between Pamela and Roy. In that case, the trademark application must be filed, listing Pamela and Roy as the owners. If Pamela files the application listing only herself as the owner, the application may be void, and any resulting trademark registration will be invalid.
But if she were starting a sole proprietorship, this would have been a different case entirely.
Example 2: The CEO/president pitfall
This pitfall can affect corporations as well as limited liability companies. Say, for example, that you have formed a corporation, an LLC, a Limited Company, or any other business entity to pay the taxes on your income generated by the business.
You must not list yourself personally as the proper owner. Instead, you must transfer ownership to the corporation or LLC paying taxes on the revenue generated by this trademark (product sales or services).
If the president/CEO of a corporation or the member/owner of an LLC lists herself as the trademark owner, that trademark application is void. The corporation or LLC must be the entity claiming ownership.
Company ownership is a whole different ball game. Company members shouldn’t be listed as trademark owners, unlike sole proprietors or partners.
Example 3: joint ventures
Let’s say that Veronica, Mary, and Stacy have formed a joint venture to start a skin-care brand. They agree that Mary will handle the paperwork necessary to register their brand as a trademark.
Mary needs to be careful. If the trademark application lists the name of one joint venture as the individual owner when, in reality, the venture itself owns the trademark, that trademark application is void.
Mary needs to list the entity type as a “joint venture” on the application, and she needs to list all the joint venture members as trademark owners.
Some tasks are best left to the professionals
There are a few types of ownership mistakes that can be corrected, such as when the entity listed as the trademark owner doesn’t, in fact, exist (i.e., the name is spelled wrong, or the entity type is wrongly identified).
You should seek guidance from an experienced IP attorney because the regulations (and dealing with the Trademark Office) can be tricky. One mistake can cost you your trademark registration.
PS Our trademark attorneys are qualified, experienced, and well-equipped to assist. Be it with your national or international trademark registration, we’re here to help.
Should you or your LLC own the trademark?
Your LLC should own your intellectual property and be identified as the trademark owner. If you identify as the trademark owner on the application, your application will be rejected.
Can a trademark have multiple owners?
According to US trademark law, more than one person can own a trademark. Keep in mind, however, that it’s essential that the person in control of the quality and nature of the products or services used be an owner.
What is the owner of a trademark called?
The owner of a trademark is called exactly that: a trademark owner.
Should a business or individual own a trademark?
Between the two, a business should always be considered a trademark owner. This is because the business is providing the product or service and not the owner.
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Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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