When someone completes a trademark application, they must indicate who will own the trademark. Although this application section might seem simple, it is one of the most common incorrect aspects of a trademark application. Correctly listing the owner is vital. Unfortunately, if the applicant does not fill out this section accurately, they run the risk of the United States Patent and Trademark Office (USPTO) rejecting their application and losing their filing fee. War IP Law, PLLC has experience assisting applicants with trademark applications, including providing recommendations about who should own the trademark application. Contact us for more information by calling (202) 800-3754.

Requirements for Listing the Trademark Owner

The trademark owner and the person filling out the trademark application are not always the same. The owner of the trademark is the person or entity who controls the goods sold or the services provided under the mark. The owner can be any of the following:

  • Individual
  • Partnership
  • Corporation
  • Association
  • Estate
  • Joint venture

If the trademark owner is a corporation, then the applicant’s name should be the corporation’s name, instead of the individual’s name. Each applicant must also list what kind of entity it is and its national citizenship. The applicant is not required to be considered a United States citizen to register a trademark, but any citizenship must be listed. If the applicant is foreign-domiciled, they must have a United States licensed attorney to represent them. 

Even if you are not required to have an attorney, you may still want help with the application and various other aspects of intellectual property law. The USPTO provides a list of benefits of hiring an attorney that applicants may want to consider. The experienced intellectual property attorneys at War IP Law, PLLC might be a helpful resource as you work through the application process.

The Trademark Applicant and the Application Signer

The person who signs the trademark application and the trademark applicant are not always the same person or entity. For instance, if the applicant is a corporation, then a representative of the corporation (such as an officer or manager) should sign the application. The person signing the application does not change the entity named as the applicant. 

If an executive of a company is listed as the trademark owner (instead of the business), that can limit a company’s options to enforce its intellectual property rights. The executive would have to personally assert a legal claim instead of the company, which can become very complicated and may completely undermine a legal claim. The executive may also be liable for any counterclaims asserted.  

Who Should Own the Trademark Application? Choosing the Right Owner and Applicant for a Trademark

The trademark owner is the person or entity that actually applies that mark to their goods and services. While this definition may seem straightforward, it can be complicated, especially in situations where an individual is the only owner of a company. 

When the Owner Is an Individual

An individual can be the owner of a trademark. It may make sense to list the owner in a couple of situations. 

The Individual Operates a Sole Proprietorship

In a sole proprietorship, there is no legal distinction between the individual and their business. They might have a business name, but there is no separate legal entity under which the individual operates. Because there is no additional legal entity and no other individuals are involved, the sole owner should generally be the trademark applicant.

The Individual Is Filing an Intent-to-Use Application

An Intent-to-Use (ITU) application is a special application for applicants who have not yet started to use their mark. In those situations, an individual might have plans to start a business or create a product, but they have not yet started using their mark in commerce yet. 

According to the USPTO, as long as the applicant intends to use the trademark with the claimed goods and/or services within the next three to four years, they can file an ITU application. An individual can still register a trademark in their own name until they create their business entity. This type of action “reserves” the mark for future use by the yet-to-be-formed company. 

When the Owner Is a Business Entity

Virtually any type of entity can register a trademark. Both corporations and limited liability companies are very common trademark owners. If the business owns the trademark and controls the mark’s use, it should be listed as the owner on any trademark application. There are several benefits to having a company own the trademark that business owners might want to consider.

  • The entity can license or assign the mark
  • The mark can add significant value to the company as a whole (because it is an intangible asset)
  • The business could use the trademark as collateral in financial transactions
  • The company will have standing to enforce its trademark rights
  • Some companies can use registered trademarks as leverage in business negotiations 

In some instances, a group of affiliated businesses will have one company hold or own all of the trademarks for a group of companies. This type of “holding” company is permitted, but it can be complicated to set up. It might require creating licensing agreements among companies. 

For example, if a holding company owns all of the trademarks, one of the related companies may enter into a licensing agreement with the holding company to use the trademark for a fee. The USTPO’s registration process only protects the owner of the trademark. As a result, if a third party starts unlawfully using the trademark, the holding company would have to step in to assert any intellectual property rights, instead of the affiliated company.

Get Help Deciding Who Should Own a Trademark Application

Any decisions about who should own a trademark application must be determined by the unique facts of the situation. What works for one applicant may not be an option for the next. An in-depth examination of an individual or business’s goals and trademark use is necessary to determine the proper applicant.  War IP Law, PLLC can provide advice and recommendations about the proper entity for a trademark application. Schedule a consultation by calling 202-800-3754.