The worst mistake you can make in filing your trademark application may be to list yourself as the owner!
Under Section 1201.02 (b) of the Trademark Manual of Examining Procedure (TMEP), an application can be void or invalid if it does not list the correct owner. Depending on the circumstances, identifying the wrong person or entity as the owner on an application may be a mistake that cannot be corrected. This type of mistake can make your trademark registration invalid.
An application must be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. TMEP §1201. Any trademark registration resulting from a void application is invalid. Non-existent.
The “incorrect ownership” mistake can happen in a few different ways. Examples of different scenarios are below.
Example 1: The Partnership Pitfall
In a case called American Forests v. Sanders, a trademark application was filed by an individual listing herself as the trademark owner. But the trademark was going to be used by a business that the individual was starting as a partnership with her husband. The court ruled that the trademark application was invalid. Both of the individuals in the partnership should have been listed as owners of the trademark. See Am Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999), aff’d 232 F.3d 907 (Fed Cir 2000).
For example, if the business that is going to use the trademark is a partnership between Pamela and Roy, the trademark application must be filed listing Pamela and Roy both 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.
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 type of business entity to pay the taxes on your income generated by the business.
You must not list yourself personally as the trademark owner. Instead, the trademark owner must be the corporation or LLC that is 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 listed as the owner. TMEP 1201.02(c).
- 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 take care of 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 enture as the individual owner, when in reality, the trademark is owned by the JV, that trademark application is void. Mary needs to list the entity type a “joint venture” on the application, and she needs to list all the members of the joint venture as trademark owners. See In re Tong Yang Cement Corp, 19 USPQ2d 1689 (TTAB 1991)..
Is This A Fatal Mistake?
There are a few types of ownership mistakes that can be corrected, such as when the entity listed as the trademark owner does not, 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 can be tricky. One mistake can cost you your trademark registration.
RUTH KHALSA is a Trademark Attorney at LegalForce RAPC Worldwide. She has a broad-based litigation experience representing employers, business owners, and individuals in arbitrations and federal or state lawsuits involving contract disputes, employment claims, business torts, trademark and licensing issues, real estate matters, and securities. Ruth received her J.D. degree from Duke University School of Law, Durham, NC, where she was Staff Editor of Duke’s Law Journal. She graduated with a B.F.A. – Piano Performance, Early 20th Century Russian emphasis (magna cum laude) from Concordia College, Moorhead, MN.