by Traverse Legal, reviewed by Enrico Schaefer - August 9, 2012 - What is a Trademark or Service Mark?
who actually owns a trademark really depends on what entity was the first to make use of a distinctive mark in commerce. It is that entity that has ownership of the trademark. And that is under common law because common law recognizes that the first to make use of a distinctive trademark, and distinctive means that it’s arbitrary or fanciful or suggestive, not merely descriptive or generic. The owner of a distinctive mark is the one that first uses it in interstate commerce.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Attorney Brian Hall with Traverse Legal, PLC; a law firm representing trademark owners throughout the world. Today, I will be answering a commonly asked question, “Who owns a particular trademark?”
Now that question actually has multiple parts to it when we look at how it should be answered. The first is who actually owns a trademark really depends on what entity was the first to make use of a distinctive mark in commerce. It is that entity that has ownership of the trademark. And that is under common law because common law recognizes that the first to make use of a distinctive trademark, and distinctive means that it’s arbitrary or fanciful or suggestive, not merely descriptive or generic. The owner of a distinctive mark is the one that first uses it in interstate commerce.
So, for example, if somebody is simply using a mark in Michigan only or in Texas only or in California only, they cannot claim rights to places where they haven’t made use of that mark. But if they have made use of it in other places, such as Florida or any other state for that matter, they can claim common law trademark rights.
Where people get confused is when we look at actual trademark registrations. The owner of a trademark registration is the entity that is listed in the USPTO trademark database, and by filing and securing a trademark registration, that particular owner is entitled to rights throughout the entire nation and priority over ownership of that particular trademark in connection with the specific goods or services with which it was registered.
However, oftentimes, clients may change the name of their entity. They may want the trademark to be owned by an entity such as an LLC or a corporation, rather than themselves individually, or, they ultimately file an assumed name, also known as a DBA and do business as a different name. So the question becomes, who actually owns that trademark?
While it is important that the USPTO database accurately reflect ownership of the trademark, it might not be 100% correct. Therefore, it is important for a trademark attorney to do due diligence to make sure that the person using it is, indeed, the owner.
While the owner of a trademark registration does, indeed, have a duty to maintain accurate ownership information. And they can do so by filing an assignment document that recognizes if a trademark has been transferred from one entity to another or if a change in name or any other ownership has occurred. By filing that, they make sure that others are aware who the actual owner of the trademark is.
So, once again, when a client asks me who owns a trademark, I always say, “Let’s look at both the common law rights and the registered rights.” They should match. And if they don’t match, there should be some underlying explanation for it. And oftentimes, it may not be able to be determined simply by looking online or otherwise because there may be agreements that reflect ownership of and licenses to use a particular mark, but one again, once we get into those more particularized issues, a trademark attorney would be best suited to advise a client further.
Once again, this has been Trademark Attorney Brian Hall answering your question, “Who owns a trademark?”
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
