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Written by : Donte Jaus
Current : 6748
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ownership is a threshold issue for any trademark application if a trademark application is filed in the name of the wrong owner the resulting registration is void ab initio so who's the proper owner the proper owner is the entity that controls the nature and the quality of the goods sold and or the services rendered how do we determine that it's usually the entity that controls the purse strings usually the entity that controls the money and how the mark is used be careful with parent subsidiary relationships and sister companies for those of you who counsel larger entities use indoors from parent and subsidiary relationships it does not Anor between sister companies and it's very unusual for an individual to own a mark if they are in business I see way too many applications filed in the name of an individual when it's a small business when that business is incorporated so if you are representing small business owners and John Q public comes to you and says they want to file a trademark application please ask them if they intend to incorporate if they say yes they intend to incorporate two days from now or a week from now ask them to do that first before you file the trademark application because we're going to talk about assignments in just a moment please be sure the owner's name and state of incorporation is correct because if it's not correct if you say the Acme Inc corporation is a a New York corporation when in fact they're a Delaware corporation and that registration issues and later for instance they want to assign that registration you can't because Acme Inc of New York doesn't exist so that owner doesn't exist so be careful with that I actually had that situation it's on the next slide but we're gonna fly through that a little bit because we have a lot of information here but especially with foreign corporations there's all sorts of different types of corporations there's an SR srl there's a there's an SP a in Italy it's hard to know what all these corporations are she can pick the right radio button on the form if you don't know ask your client do not assume you know the type of entity you can look it up on Google and then ask to confirm it with your clients you
Thanks for your comment Mohamed Singh, have a nice day.
- Donte Jaus, Staff Member
hi everybody I'm trademark attorney Josh gurbin the very first question on any trademark application is who will the owner of the trademark be and this is an incredibly important question to get correct because if you answer it incorrectly the resulting registration can be completely void and worthless so to get started let's talk about who can own a federal trademark registration in the US so here's the typical list of owners for a trademark registration in the United States the first is an individual so this could be a US citizen it could even be a citizen from another country the next is a corporation an LLC or a limited liability company a trust can own a trademark a partnership a joint venture and even in this state can own a trademark so as you can see there's a lot of options so which one should you pick typically the owner of your trademark should be the person or entity that controls the trademark this means that actually sells the products or offers the services associated with the trademark or owns a trademark and licenses that trademark to somebody else or another company and still controls the trademark through that licensing agreement so this question is so important to get right because what can happen is you can fill out the application list whatever owner you want government's not going to really check on that and they can issue the registration then years later when you go to do enforcement or you're involved in litigation your opponent may seek to cancel the trademark on grounds that the trademark wasn't owned by the proper entity or individual in the first place and that could be massively devastating to a company to lose a federal trademark registration and finally let's take a real-life example of something we saw in a trademark application for Tom Brady the NFL quarterback and show you how this could have affected his trademark rights so as you can see here the original application filed by Tom was filed in the name of his agents company ye and Dublin's sports this company has nothing to do with Tom Brady except for that it represents him as his agent it's very unlikely that that agency controlled this tv12 trademark and was the proper owner and as you can see here as years went on somebody might have discovered this because an assignment was filed from that entity to TEB Capital Management which is an entity that Tom Brady actually owns himself so even though that assignment was filed if there's ever enforcement around this mark it could be possible for the opponent to go and try to cancel these registrations on grounds they were never owned by the proper entity to begin with so as you can see this could be a super complicated issue and it just appears to be a simple an oculus question on the trademark application so take a lot of care when completing the answer to this question now all the things I've covered to this point are in correctable errors that means if you file it in the wrong name you simply 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 so I'm gonna give you the two most common things that we see the first is when you file a trademark application in the name of a company or an LLC you need to get the exact name of the company or the LLC correct it's very common for people to shorten the name of their company when they're discussing it with other folks and may forget some additional words that are in the actual legal name of the company so getting that legal name correct in the trademark application is critical the other common mistake we see is that somebody has a corporate entity but has allowed it to lapse because they didn't pay the required fees with the state government to keep it active and if you file an application in the name of an inactive company that also is a major problem a correctable error in most cases but something that before you file a trademark application you should always ensure that a corporate entity is listed as active with a particular state government where it was formed so there you have it those are some tips on how to ensure a trademark is filed in the name of a correct trademark owner and ensuring that owner is listed properly in the trademark application I hope you enjoyed and I'll see you next time you
Thanks Tuan your participation is very much appreciated
- Donte Jaus
About the author
I've studied cataloging at Chadron State College in Chadron and I am an expert in landscape archaeology and landscape history. I usually feel crazy. My previous job was secretary I held this position for 16 years, I love talking about tennis and jam skates. Huge fan of Ellen Page I practice taekwondo and collect vintage guitars.
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