Trademark Applicant Is Not Necessarily the Individual Signing the App
In a USPTO trademark application, you have to be very careful in identifying the right applicant. The applicant is the person or entity who owns the trademark. Let’s explore the implications of identifying an individual as the applicant in a trademark application for federal registration.
Need to register your trademark? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help you protect your brand.
Who is the Trademark Applicant?
The trademark applicant is essentially the owner of the trademark. But what makes a person or company a trademark owner?
US law defines the trademark owner as the one who controls the nature and quality of goods or services sold under a particular mark. In most cases, the owner will be the entity selling the goods or services.
The trademark owner, however, can be an entity that does not sell any product, but licenses the use of the mark to others. In these licensing situations, the trademark owner would be the licensor who controls the quality of the goods or services being sold by the licensees.
It would be ideal to have a written trademark license agreement between the trademark owner (licensor) and licensees. The one exception would be where the trademark owner is a parent company and the licensee is a wholly owned subsidiary.
Implications of Having an Individual Trademark Applicant
By identifying an individual as the applicant, you are essentially saying that the individual owns the trademark. The individual must be the one to control the nature and quality of goods.
Individual Applicant in Use-based Trademark Application
An individual applicant in a use-based trademark application is declaring that the individual has been selling goods or services under the mark. If the goods or services have actually been sold by an entity other than the individual, the individual should have a proper trademark license agreement with the entity. That way, the trademark usage by the entity would inure to the benefit of the individual.
Issues can arise when the individual has not sold any goods or services under the mark, and there are no license agreements with the entity actually using the mark.
Individual Applicant in Intent-To-Use Trademark Application
Identifying an individual as the applicant in an ITU trademark application means the individual has an intent to use the mark on the identified goods or services. Is the individual really planning on selling goods or services themselves? Or is the plan to form a company and have the company sell the product?
What if the individual never sells the product? Suppose the individual owns a company which then uses the trademark. In that situation, you want to make sure to have a trademark license agreement in place.
Can Trademark Ownership Be Transferred from an Individual to a Company?
Yes, a trademark assignment transferring ownership can be signed and recorded with the USPTO. Timing is important.
Generally, trademark assignments are simpler to file in use-based applications. Assigning an ITU application, on the other hand, requires more attention to detail and timing.
In an ITU application filed on behalf of an individual, the timing of the submission of use evidence is important. Who or what company has been using the mark? Will specimens of use show that usage is being made by a company? These questions will factor into whether the trademark assignment should be filed before or after submitting use evidence.
Correcting the Identity of the Trademark Applicant
It is not so simple to correct the identity of a trademark applicant. Certain parts of a trademark application may be difficult to correct once filed. For example, you cannot broaden the scope of goods and services once a trademark application is filed.
When it comes to correcting the trademark applicant, you can correct only minor typos in the name of an applicant. What you cannot do is change the applicant to a different entity altogether. For that, you would need to file a trademark assignment to reflect a change in ownership.
Need to File a Trademark Application with a Higher Probability of Approval?
Can you afford months of delay and potential rejections? If not, contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to see how we can help you protect your brand with reduced risk of delay and rejections.
