These materials were originally presented by Eric Perrott to the American Bar Associations’s Committee on USPTO Operations Relating to the Trademarks and Ex Parte Trademark Practice as a part of their “brown bag” trademark discussions.
As trademark attorneys, we have all needed to sift through complicated ownership structures to attempt to figure out exactly who is the correct owner of the client’s trademark. Inevitably, ownership issues will surface and it is important to know when an error is correctable and when error dooms an application (or registration purposes).
There are several different kinds of errors that could occur – errors in the mark, errors in the recitation of goods and services, errors in specimens or descriptions of the mark, and errors in ownership. The first four are fairly common and are usually correctable, so long as the change does not materially change the trademark or expand the goods and services outside of the original scope of the application.
Errors in ownership, however, can create problems far into the future of the trademark registration and may not be correctable.
TMEP 1202.02(c) lays out several examples of correctable errors in identifying the application, including:
- Trade Name Set Forth as Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant’s correct legal name is permitted. Cf. In re Atl. Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats 1990) (finding that Post Registration staff erred in refusing to allow amendment of affidavit under 15 U.S.C. §1058 to show registrant’s corporate name rather than registrant’s trade name).
- Operating Division Identified as Applicant. If the applicant mistakenly names an operating division, which by definition is not a legal entity, as the owner, 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, as long as this does not result in a change of entity. However, change of a significant portion of the applicant’s name is not considered a minor clerical error.
- Inconsistency in Original Application as to Owner Name or Entity. If the original application reflects an inconsistency between the owner name and the entity type, for example, an individual and a corporation are each identified as the owner in different places in the application, the application may be amended to 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, 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 application may be amended to correct the applicant’s name.
Certain errors in identification of owner are incorrectable. TMEP 1201.02 provides some helpful examples, including:
- President of Corporation Files as Individual. If 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), the application is void as filed because the applicant is not the owner of the mark.
- Predecessor in Interest. If an application is filed in the name of entity A, when the mark was assigned to entity B before the application filing date, the application is void as filed 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.
- Sister Corporation. If an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark, the application is void as filed, because the applicant is not the owner of the mark. Great Seats, 84 USPQ2d at 1244 (holding §1(a) application void where the sole use and advertising of the mark was made by a sister corporation who shared the same president, controlling shareholder, and premises as the applicant).
- 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 as filed because the applicant is not the owner of the mark.
A company files a trademark application for wireless headphones. During the registration process, it is revealed that the company who filed is a licensee of the trademark owner, and the trademark owner would like the trademark application changed to its name.
No. The application may not be amended to designate another entity as the applicant. 37 C.F.R. §2.71(d); TMEP §803.06. An application filed in the name of the wrong party is void and cannot be corrected by amendment. 37 C.F.R. §2.71(d); see Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1244 (TTAB 2007); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).
The USPTO may record an assignment of the trademark application, but the application would still be void for lack of use at the time the application was filed (or lack of bona fide use if a 1(b) and would (rightfully) be subject to cancellation if challenged.
A company forms a new corporation and dissolves its LLC, transferring all of its assets to the new corporation. A month later, company’s counsel files a trademark application under the old LLC’s name. Once the registration issues, counsel realizes the mistake and wants to change the name to the new corporation.
Unlikely. While different states have different “wrapping up” statutes for dissolved corporations and LLC, it would be extremely difficult to prove that a dissolved company was capable of bona fide use or a bona fide intent to use a mark to sustain a trademark application under 1(a) or 1(b).
A company files a trademark application under its name, but the company that is actually rendering the services is a sister-company. A competitor brings a Notice of Opposition and one of its claims is that the application is void ab initio because the sister company was the owner, not the applicant.
It depends. This is a highly fact specific scenario. The applicant very well could be licensing the mark to a sister company while retaining the rights to the mark. In that case, the application would likely not be void. However, if the opposer can establish that the applicant did not exercise the required level of control and that the sister company was actually the trademark owner, it may doom the resulting application and no assignment or correction would fix it.
During settlement negotiations in a cancellation matter, one party discovered that it had registered its trademark as Party 1 LLC, a DC LLC, when it was, in fact, a Delaware LLC.
Probably. After discussions, it was mutually determined that this was a typographic error, as Party 1 LLC did not have a DC LLC under that name. If it had a sister company under that name, then it would not likely be correctable.
Ownership issues can be extremely challenging to recognize and, as seen above, even harder (or impossible) to fix. Every trademark attorney needs to ask his or her client’s the right questions and look into trademark ownership before it becomes a bigger problem later down the road.