A Trademark Application Must Be Filed by the Trademark Owner
A frequently asked question in trademark practice is, what if the trademark application incorrectly identifies the trademark owner or identifies a party who is not the trademark owner at the time of the filing. Under the former circumstance, a correction can be made and under the latter circumstance, the application would be void ab initio. In order for a trademark application to be valid, it must be filed by the party who is the owner of the mark as of the application filing date, see Trademark Manual of Examining Procedure "TMEP" 1201.02(b). If the applicant does not own the mark as of the filing date, the application is void. See Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Conolty v. Conolty O'Conner NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014) [precedential]; Great Seats, Ltd. v Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007).
It is not always easy to determine who the correct trademark owner is at the time the application is filed. See Conolty v. Conolty O'Conner NYC LLC, where the Board held that the application for the mark FAIRWAY FOX was void ab initio because the named applicant was not the "sole" owner of the mark. The case involves two friends (Conolty and O'Connor) who worked together to build a fashion brand. They started to work together in 2008. However, one of the two individuals formed a single member LLC, and filed for the trademark FAIRWAY FOX in the name of the LLC. After the single member LLC was formed, the two individuals continued to work together in the fashion company. Conolty designed the clothing and O'Connor funded the business. Documents submitted into evidence identified O'Connor and Conolty as "founders" or "co-owners" of FAIRWAY FOX branded apparel. They worked together in the fashion business for over three years, but ended up going in different directions in the fourth year, in May of 2012. The trademark application was filed on January 23, 2012. In January 2012, Conolty and O'Connor attended a merchandise show together, and the first branded goods were sold under FAIRWAY FOX.
The Board concluded that both Conolty and O'Connor were owners of the brand FAIRWAY FOX. Since O'Connor filed the application naming her single member LLC as the owner, the Board deemed the application void from the beginning. Naming the incorrect party or entity as the trademark owner can be a fatal mistake. See our web page entitled, Who Should Be The Owner Of A Trademark, for more information on this topic.
When an application is filed in the name of the wrong party, this mistake cannot be cured by an amendment or an assignment. Examples of filings that cannot be corrected include the following situations: (1) if a corporation owns a mark, but the president of a corporation files as an individual; (2) if there are joint owners and one of the owners files as an individual, sole proprietorship or a single member LLC etc.; or (3) if there is a parent company and two sister companies, and sister company A owns the mark due to its use of the mark and control over the quality of the goods, but sister company B is named owner in the application.
However, there are some circumstances that would allow for a correction of a filing mistake in ownership. For example, if the party is indeed the owner of the mark, but there is a mistake in the manner in which the name is set forth in the trademark application, this can be cured by amendment. Some correctable errors include: (1) if the applicant identifies itself under a name that it does business under, but this name is not a legal entity; (2) clerical errors can be corrected by amendment, for example if you forget to include the corporate designation Inc. or Corp.; (3) if you inadvertently use an individual's name in one part of the application and use a corporate name in another part of the application (you can amend to clarify this inconsistency); or (4) if you recently changed the corporation's name and you inadvertently name the former organization, this can be corrected because the correct party filed the application, but merely identified itself incorrectly. If you have questions or concerns regarding trademark ownership, please contact the firm for a courtesy consultation.