An application to federally register a mark must name the mark’s owner. Although it might seem like this task should be straight-forward, due to legal nuances, mistakes regarding mark ownership are rather common and sometimes can sabotage an application or any resulting registration.
From the perspective of registering a mark, the true owner of a mark is the “legal entity” that:
- Exclusively and continuously uses the mark with the identified goods/services; and/or
- Controls the nature and quality of the goods/services with which the mark is used by any related company or licensee.
The sole exception is that, when the application lists an Intent-To-Use filing basis, the owner is the legal entity who, on the filing date of the application, intended to use (or control the use of) the mark in interstate commerce.
While the USPTO allows certain minor mistakes (like certain typographical errors) to be corrected during the application process, the following errors cannot be corrected and will doom an application, thereby requiring the submission of a new application if registration is to be obtained:
- Listing as the owner the president of a corporation, when in fact the corporation owns the mark, and there is no inconsistency in the original application between the listed owner name and the listed “entity” type (e.g., the entity type is listed as an “individual”);
- Listing as the owner the former owner of the mark as of the application filing date;
- Listing as the owner the name of a joint venturer when the mark was owned by the joint venture itself, and there is no inconsistency in the original application between the owner name and the entity type;
- Listing only one individual as the owner of an Intent-To-Use application, when the actual intent was for partners to use the mark;
- Listing as the owner a sister company of the true owner; and
- Listing as the owner a subsidiary company when the parent company is the true owner.
When the incorrect legal entity is mistakenly named in an application as the owner of the mark, as in the examples above, that mistake will void the application (and cause refusal of the application if the USPTO learns of the mistake). Even if undetected by the USPTO, the mistake can provide grounds for a competitor to invalidate any registration that issues/issued. In that case, the true owner can be prevented from successfully enforcing the registered mark against infringing competitors.
A mistake in ownership also can empower an infringer to seek cancellation of the registration by the USPTO, and possibly open the door for a competitor to adopt the mark and register it in their own name.
So, while often overlooked as trivial, correctly naming the owner of the mark in the application has wide-reaching implications that extend well beyond the registration process.