Trademarks are valuable assets that protect the identity and reputation of your brand. However, trademarks can also be subject to ownership issues, especially when there are multiple owners involved. In this blog, we will explain some of the common scenarios and challenges that arise when multiple people own a trademark, and how to avoid or resolve them.
One of the first issues that multiple owners of a trademark may face is how to register the trademark with the United States Patent and Trademark Office (USPTO). It is important to note that a trademark application must be filed in the name of the owner of the mark. The owner can be an individual, a corporation, a partnership, a joint venture, an association, a trust, or any other legal entity. However, if there are multiple owners of the mark, they must all be listed as joint applicants in the application. This means that all the owners must sign the application, either personally or through an authorized representative. The application must also include the citizenship and address of each owner, and a statement explaining the nature of their joint ownership (e.g., co-owners, joint venture partners, etc.).
Another issue that multiple owners of a trademark may encounter is how to maintain and renew the trademark registration. The USPTO requires that trademark owners periodically file certain documents to keep their registrations alive. These documents include:
A declaration of use or excusable nonuse under Section 8 of the Lanham Act between the fifth and sixth year after registration;
A combined declaration of use or excusable nonuse and application for renewal under Section 9 of the Lanham Act every 10 years after registration;
A declaration of incontestability under Section 15 of the Lanham Act (optional).
These documents must be signed by all the owners of the mark, or by one owner with the consent and authority of all the other owners. If any owner fails to sign or consent to these documents, the USPTO may refuse to accept them and cancel the registration.
A third issue that multiple owners of a trademark may face is how to transfer or assign their rights in the mark. A trademark assignment is a legal agreement that transfers all or part of the ownership rights in a mark from one party to another. A trademark assignment must be in writing and signed by both parties. However, if there are multiple owners of the mark, they must all agree to and sign the assignment. If any owner does not agree or sign, the assignment may be invalid or incomplete. For example, if two co-owners of a mark assign their rights to a third party, but one co-owner does not sign the assignment, the third party may only acquire half of the rights in the mark, while the other co-owner may retain his or her half. This may create confusion and conflict among the parties involved.
As you can see, owning a trademark with multiple people can pose various challenges and risks. Therefore, it is advisable to consult with a trademark attorney before entering into any joint ownership arrangement. A trademark attorney can help you draft a clear and comprehensive co-ownership agreement that defines the rights and responsibilities of each owner, such as:
How to use and control the mark;
How to share profits and expenses related to the mark;
How to resolve disputes or disagreements over the mark;
How to transfer or assign rights in the mark;
How to terminate or dissolve the co-ownership.
By having a co-ownership agreement in place, you can avoid potential problems and protect your interests in your trademark.
We hope this blog has been helpful and informative for you. If you have any questions or comments about trademark ownership or other trademark matters, please feel free to contact us. We are here to assist you with your branding needs.