Trademark Ownership

Trademark Ownership and Transfer: A Complete Guide to Protecting Your Brand

Who Can Own a Trademark

 A‍‌‍‍‌ trademark is a name, design, symbol, or even a phrase which identifies and distinguishes a company’s products or services from those of other companies. The trademark symbol (™) or ® indicates the owner and the protection granted by U.S. law. Ownership can be assigned to:

Individuals:
One person can run and possess a trademark for the business he or she is operating.

Entities:
A corporation, an LLC, or a partnership can be a trademark’s owner.

Authorized Representative:
A person who has power to make decisions on behalf of the owner such as a CEO, partner, or corporate officer can submit a trademark application for the entity.

Non-Attorney Employee:
A non-attorney employee can send the application as a scrivener if he/she has the authorization of the owner or the person with binding authority.

How to Claim Trademark Ownership

Use in Commerce:
The holder of a trademark gets the ownership right when he/she uses the trademark name in the area of commerce that is related to his/her products or services. These rights are called common law rights and are effective only in the geographic area where the mark is used.

Federal Registration:
If you want to have a more solid and wide protection, you need to place a trademark application with the United States Patent and Trademark Office (USPTO). After that, your mark will be displayed with the trademark symbol (®) indicating that it is a fully protected federal ‍‌‍‍‌mark.

Intent to Use:
If you have not yet started using the mark in commerce, you can file based on a “bona fide intent to use.” The entity that holds this intent is considered the true owner once the mark is registered.

Important Considerations in Trademark Ownership

Goodwill:
It is vital to transfer goodwill along with the mark, as this goodwill is the customer’s association with your trademarked brands, i.e. the mark’s reputation, trust, and recognition. A transfer without goodwill may be declared invalid.

Application Details:
The trademark application must always be filed in the name of the actual owner exercising control over the nature and quality of the goods or services. Incorrect filing may result in the registrant being subjected to issues or cancellations.

Transferring Ownership:
In the case of a business sale or merger, the trademark ownership transfer has to be executed and recorded properly. To make the transfer official, a written assignment agreement must be submitted to the USPTO. This process, referred to as a Trademark Assignment Search, guarantees that the new owner is recognized in public as the legitimate holder.

Trademark Ownership Search and Verification

Before you buy a brand or start a licensing agreement, do a trademark ownership search or Trademark Assignment Search to find out who owns it and if there are any disputes over it. Additionally, you may conduct a worldwide trademark search to discover similar marks in other jurisdictions and secure your brand globally.