OWN YOUR TRADEMARK
Remember, a trademark is a brand asset (name, logo, slogan) which identifies the source party which produces the product/service to which the trademark is attached. Thus, when an individual sees the Starbucks logo affixed to a cup containing coffee, the consumer understands that the coffee about to be consumed is produced by the Starbucks Corporation and therefore will likely cost more money than a cup of coffee from the local gas station.
Thus, when submitting a trademark application to the United States Patent and Trademark Office (USPTO), it’s essential that you correctly identify who the “applicant” or owner of the trademark application will be. Will an individual own the trademark? Multiple co-founders? An LLC? Corporation? Non-Profit? If you make any errors when listing the trademark applicant, then your trademark application could be delayed or cancelled altogether. Trademark rights without proper ownership is ultimately pointless. Keep reading to learn how to correctly designate the correct trademark Applicant.
CORRECTLY IDENTIFYING THE TRADEMARK APPLICANT
Listing who the trademark applicant is may seem like one of the easier steps of the application process. However, questions can quickly arise. Should you list your name or the name of your company? Do you have business partners to consider? Can you list more than one name?
On the most fundamental level, the “Applicant” is whoever is or will be selling products or services under the trademark. If you alone are selling your good or services, then you’re the applicant. If the goods and services are being sold by a company, then the company is the applicant. As a general matter, it is a good practice to list the company as the Applicant if the company consists of more than one individual however in the event that the company is owned and operated by only a single individual, it is not hugely consequential if the individual owner wishes to be listed as the Applicant.
Issues can potentially arise when an early stage startup receives funding and the VC (or angel investor) wants a change in ownership before the investment event occurs. Speak with a trademark attorney to learn more about these various potentialities.
THE TRADEMARK APPLICANT VS. THE APPLICATION SIGNER
Assuming that the signer of the application is always the trademark applicant is a common misunderstanding, especially among first-time filers. Usually, when we’re asked to sign other official documents (e.g., loan applications, college applications) our signatures indicate that we are the applicants.
In the case of trademark applications, the person who signs the trademark application is not necessarily the trademark applicant. For example, in many cases, the identified trademark applicant is a corporation, but an officer of the company must sign the application. That signature doesn’t change the fact that the company is the trademark applicant. Here too, various issues can arise, especially if the applicant is from outside of the US. Since the USPTO’s Trademark Rule Changes which were in large part designed to stop fraudulent filings and Statements of Use, the Trademark Office has been keenly attuned to situations whereby foreign applicants list US-based signatories and even attorneys to satisfy statutory requirements.
REALIZING YOU’VE MADE AN ERROR
Dealing with the Government can be challenging, especially when there is no one to call (except our trademark attorneys :)) one is required to submit forms online!
If you’ve realized that you’ve made an error when identifying the applicant after you’ve already submitted the application, then you may be able to make corrections depending on the type of error. Remember, the USPTO, like all bureaucratic bodies, is obsessed with dates and filing deadlines and there are opportunities to submit amendments to existing applications (certainly before those applications have been reviewed by an examining attorney) if done correctly.
What would a “mistake” consist of? It is unfortunately not all that uncommon for small business owners to misunderstand the type/status of their business entity and while Joe Jackson might believe that he is operating a C-Corporation, he is in fact the owner of a Limited Liability Company (LLC). Or, more significantly, Joe Jackson might mistakenly believe that because he is only a silent owner in the company and because his employee does all of the company’s contract work, the employer should be listed as the Applicant. This mistake would unwittingly make Joe’s employee the owner of Joe’s brand!
TRADEMARK ASSIGNMENTS CHANGE APPLICANT OWNER STATUS
Suppose that a person correctly listed him or herself as the Applicant of the trademark and received the Trademark Registration certificate 2 years from filing. One year later, the owner decides to sell his company and the trademark rights with it. How should such a transaction occur?
The USPTO has decided that it must have a record of the Assignment in order for the Trademark Assignment to be a bona fide transfer. The USPTO maintains a separate Trademark Assignment Recordation Branch and requires both the Signor and the Signee to agree to the Assignment in a special Trademark Assignment Agreement . Trademark Assignments entail the signor and assignee agreeing to the “Complete” and “Full” transfer of all rights and interests in the trademark. Here, the language really is important and if the verbiage is deemed to be incorrect, the assignment will not be accepted.
CONTACT A TRADEMARK ATTORNEY
The best way to avoid any issues around wrongly identifying the trademark applicant on your trademark applications is to consult with one of our trademark attorneys before submitting your trademark application. We’re here to help.