The very first question on any trademark application is who will the owner of the trademark be? This is an incredibly important question to get correct, because if you answer it incorrectly, the resulting registration can be completely void and worthless.
Who can own a federal trademark registration in the United States?
There are various types of entities that can own a trademark registration in the United States. This includes U.S. citizens, foreign individuals, corporations, LLCs, trusts, partnerships, joint ventures, estates, and more. With so many options, it can be difficult to decide which you should choose to list on your application, but it’s very important to get it right.
Typically, the owner of your trademark should be the person or entity that controls the trademark. This is whoever actually sells the products, offers the services, or owns the trademark and licenses it to others.
What are the consequences of listing the incorrect owner?
If you list the wrong trademark owner in your application, the USPTO could still issue you your registration. That said, the consequences of this mistake can affect your business greatly in the future. If you ever need to enforce your registration or get involved with litigation, your opponent may seek to cancel your trademark on the grounds that it was not owned by the proper entity or individual in the first place. This could be massively devastating to a company.
One noteworthy example of this type of issue is NFL quarterback Tom Brady’s trademark for “TB12.” In his application, Tom Brady listed his agent’s LLC as the owner. This company has nothing to do with Tom Brady, except for that it represents him as his agent. It’s very unlikely that the agency controlled his “TB12” trademark and was the proper owner.
Years later, an assignment was filed from that entity to TEB Captial Management, a company owned by Tom Brady. Despite this assignment, if there is ever enforcement around this mark, it could be possible for the opponent to try to cancel the registration on the grounds that it was never owned by the proper entity.
The previous mistakes are examples of uncorrectable errors. That means that if you file your application in the wrong name, you cannot go back and correct that error. You have to start all over again and file a new application. There are some forms of correctable errors in a trademark application when it comes to the owner, but it’s better to try to avoid those from the get-go.
How can you avoid common ownership mistakes?
There are two common ownership mistakes that we frequently see in trademark applications.
The first is filing an application with an incomplete company name. When you file a trademark application in the name of a company or an LLC, you need to list the exact name of the company or LLC. It’s very common for people to shorten the name of their company when discussing it with others and thus write the abbreviated name on their application. However, it is critical to get the legal name correct.
The other common mistake we see is a company letting their corporate entity lapse by forgetting to pay their required fees with the state government to keep it active. If you file an application in the name of an inactive company, it is a correctable error in most cases, but it’s best to have the entity listed as active prior to filling out all the forms.
If you have any further questions regarding trademark ownership, please feel free to reach out to any of the attorneys at Gerben IP.