Who owns the trademark?
It’s not uncommon for first-time trademark applicants to raise questions concerning ownership of the trademark. A trademark owner must be identified in an application for federal trademark registration. Should the applicant be identified as an individual or a company? The answer depends upon who will ultimately control the quality of the goods or services.
In most cases, it would make sense to identify the company as the applicant if the company is or will be selling the product. Presumably, the company handles quality control of its products, processes returns, deals with customer issues related to the quality of the product, and so on.
What if the trademark owner is not the one selling product?
It is possible for a trademark owner to be a person or entity other than the one actually selling the product. In these situations, a well drafted trademark license agreement should be executed to clearly establish that the trademark owner (licensor) is monitoring the quality of the products to be sold by a licensee. Without written license agreements in place, you may end up with a naked license which could ultimately void any rights to the mark.
What if someone merely thinks of a name or logo?
People come up with names for products all the time. Most of the time, these thoughts are nothing more than mere fancy – “If I were to sell such a product, I would call it [insert cool/funny/whatever name].” Creative contributions to a name or logo, though significant, are not enough to create trademark rights. You must make use of the trademark in order to gain rights, and trademark use means offering goods or services in connection with the trademark. Furthermore, the owner of a trademark is required to control the quality of the goods or services.
Therefore, merely inventing a mark is not enough to establish trademark rights (although it might be sufficient to establish copyright rights in certain cases). You must actually sell product under the mark to establish trademark rights. That being said, anyone can file an Intent-To-Use application.
What if the trademark has not yet been used?
A prospective trademark user may file an Intent-To-Use (ITU) trademark application to reserve rights to a mark. The ITU applicant should be the person or entity who will use the mark on the goods or services, and will control the quality of these forthcoming products. In an ITU application, the applicant must eventually follow up with evidence of use in commerce to secure a registration assuming the application is allowed.
If you’re an entrepreneur planning on incorporating soon, it may be best to hold off on filing an ITU application until after your entity is incorporated. The USPTO generally forbids ITU applications from being assigned to a different owner prior to the original applicant submitting evidence of use. So, if you decide to file an ITU application on behalf of yourself as an individual, make sure you file a proper Statement of Use with acceptable specimens before transferring the trademark application to a company.
What if there are multiple owners of a trademark?
If multiple individuals or entities co-own a trademark, then each co-owner must be identified in the trademark application. Otherwise, any resulting registration may ultimately be void. This is another advantage of identifying a company as the owner – any potential complications of joint ownership may be avoided.
Between a manufacturer and distributor, who owns the trademark?
If no written agreement exists between a manufacturer and a distributor, there may be a rebuttable presumption in favor of the manufacturer being the trademark owner. The TTAB will look to the following relevant factors to determine which party should own the mark:
- Which party created and first affixed the mark to the product;
- Which party’s name appeared with the trademark on packaging and promotional materials;
- Which party maintained the quality and uniformity of the product, including technical changes;
- Which party does the consuming public believe stands behind the product, e.g., to whom customers direct complaints and turn to for correction of defective products;
- Which party paid for advertising; and
- What a party represents to others about the source or origin of the product.
Can trademark ownership be challenged in an ITU application?
No, an ITU application cannot be challenged on the basis that the applicant is not the rightful owner of the mark. See Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 (TTAB 2019) [precedential]. However, an ITU application may be opposed for lack of bona fide intent to use.