Westchester Women's Bar Association

The Importance of Naming the Proper Trademark Owner

The party who is the owner of a trademark must file the trademark application. If the applicant does not own the mark on the date the application is filed, the trademark application is void (37 C.F.R. §2.71(d)). In other words, this defect cannot be cured by amendment or assignment. An applicant can rely on use by a related company. For more details regarding related companies, see our web page entitled, Trademark Use By Trademark Applicant's Related Company. Reliance on use by a related company is acceptable as long as (1) the mark is used in connection with the same goods and services identified in the registration; (2) the applicant maintains control over the quality of the goods or services; (3) and if there is exclusive use only by the related company, then this fact must be disclosed in the trademark application (37 C.F.R. §2.38(b)).

With this in mind, it is critical to determine who the owner of the trademark is prior to filing the trademark application. If there is a dispute between a manufacturer and a distributor, the manufacturer is presumed to be the owner, absent an agreement between the parties. However, this is a rebuttable presumption. The following factors will be reviewed to determine proper ownership: (1) which party first used the mark on the product or in connection with the services; (2) which party's name appeared with the trademark on packaging and in advertising; (3) which party maintained and controlled the quality of the product or quality of the services; (4) which party does the public believe is the source of the goods or services; (5) which party invested in promotion and advertising; and (6) evidence of what each respective party is representing to the public regarding the source of the goods or services.

If the applicant is the U.S. distributor or importer for a foreign manufacturer, the U.S. distributor or importer can register the mark for the foreign manufacturer in the U.S. if: (a) there is written consent from the foreign manufacturer; (b) there is a written agreement between the distributor and manufacturer that states that the U.S. distributor or importer is the owner of the mark in the U.S.; or (c) if there is an assignment of the mark for the U.S. rights including the business and goodwill. The written documents do not have to be filed with the USPTO, but should be maintained by the applicant in case the examining attorney requests the documents.

Either an individual or an entity may own a trademark that is used by a wholly related company. If the related party consists of a wholly owned company of the applicant, then either the parent corporation or a subsidiary corporation may be the proper applicant. In other words, the USPTO will accept an application from either the parent or wholly owned subsidiary and will presume that this is the intention of the parties as to ownership. However, once the trademark application is filed, the only way to change ownership is through assignment.

Unless the record or specimen contradicts the claim of ownership made by the applicant, the examining attorney will not inquire about the relationship between the applicant and other parties named on the application. For example, if the trademark application identifies the applicant as the licensee, then the application will be refused under §1 of the Trademark Act on the ground that the applicant is not the owner of the mark. We have learned through experience that you must use caution when responding to an examiner's inquiry regarding ownership. If ownership is questioned, an applicant should start by submitting a simple statement such as, "the Applicant controls use of the mark and the quality of the goods or services" (assuming this statement is accurate). If you have questions concerning trademark ownership or which party should file the trademark application, please contact our office for a courtesy consultation.

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Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs