One frequent question I get is whether you have to have a business entity formed in order to file a trademark application. This is an important decision that you will need to make. You will also need to correctly identify the trademark owner if you file a trademark application with the U.S. Patent & Trademark Office. In this post, I will discuss some of the important aspects around the issue of trademark ownership.
If you are already using your trademark in commerce in the U.S., then you may already have common law rights to your trademark. Those rights belong to you as an individual if you do not have a business entity established. If you have a business partner, then you may co-own rights to the trademark with that partner.
Should you file a trademark application without a business, then you would list yourself as an individual owner of the trademark. Anyone else that co-owns the trademark should be listed as a joint applicant. If the trademark is not already being used, then the applicant(s) listed would be the individual(s) with an intent to use the trademark.
Business Entity Ownership
On the other hand, let’s say that you do own a business entity. There are many types of business entities, but corporations and limited liability companies (LLCs) are the most common in the U.S. Your business may be the actual owner of your trademark. If your business entity is the provider of products and/or services under your trademark, then it is most likely the trademark owner.
There are many benefits to owning a business entity and having that entity own your trademark. Most people start a business entity because of the tax benefits that it can provide. These entities can also limit your liability, should you be involved in a legal dispute. For this reason, you may want to create a business entity that you can list as the trademark owner in your application.
Federal Trademark Application Ownership
The issue of ownership is crucial when filing a federal trademark application. If the owner information in the application is incorrect, your application can be deemed void as filed. This is something the Trademark Office might catch on review of your application. That is not always going to be the case, though. If the ownership information is wrong, your registration could be cancelled.
As I frequently tell clients, a registration is only useful if it can stand up to legal challenge. Working with an experienced trademark attorney will help prevent issues like this down the road. An attorney can help you determine the proper owner for the trademark. They can also make sure the information on your trademark application is correct prior to filing.
Assignment to a Business Entity
Having a business entity own your trademark is usually the ideal situation. However, there are times when you want to file your trademark application without having to wait for that process. Especially when you are filing on an intent to use basis. There is an easy way to handle this scenario.
If your business entity has not been created but you are ready to file your application, you can file under your name as an individual. Once you receive your registration, you can then file a trademark assignment. This will assign your rights in the trademark to your business. Once completed, your business will be the owner of the trademark and corresponding registration!
It is important to note that there are key restrictions regarding the assignment of an intent to use application. You must start using the trademark in commerce prior to assigning an intent to use application. You also must file a Statement of Use. These restrictions are in place so that businesses cannot just file multitudes of applications for the purposes of selling them to others.
Are You Ready to File Your Application or Assign a Trademark Registration to Your Business?
A trademark attorney can help you determine the correct owner of your trademark. You can also work with an attorney to assign the rights in your trademark and federal trademark registration. For help with either of these items, please call me at (480) 360-3499, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.