Application Filing: Can Non-Owners Submit Trademark Applications?

Trademark Application

Filing a trademark application involves important legal considerations. One common question is whether a non-owner can submit a trademark application. In this article, we will explore this topic, providing insights into the requirements and implications of trademark application filing.

Ownership Requirement for Trademark Applications

Firstly, it is crucial to note that the applicant must be the owner of the mark when filing a trademark application. For applications based on use in commerce, the mark’s owner on the filing date must file the application. If the applicant lacks ownership rights on the filing date, the application is void.

Legal cases such as Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) and Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1239 (TTAB 2007) support this requirement. They establish that an application filed by a party without ownership rights is ineligible for registration.

Refusal of Registration for Non-Ownership

During the examination process, if it becomes evident that the applicant is not the owner of the mark, the examining attorney will refuse registration. It is important to note that the examining attorney does not cancel the filing date or refund the application fee; instead, refusal is based on the lack of ownership rights.

Intent to Use Requirement and Ownership

In trademark applications, the applicant must demonstrate entitlement to use the mark in commerce on the filing date. The application must include a verified statement indicating a bona fide intention to use the mark in commerce. Ensuring the designated applicant genuinely intends to use the mark in commerce at the time of filing is crucial. Failure to meet this requirement voids the application.

The legal case of Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999) highlights this aspect. It upheld the voiding of an intent-to-use application filed by an individual when the bona fide intention to use the mark in commerce on the filing date was held by a partnership composed of the individual applicant and her husband. Notably, the examining attorney generally does not inquire into the applicant’s intention to use the mark in commerce unless clear evidence suggests otherwise.

Irreparable Defects and Correcting Mistakes

If an application is filed in the wrong party’s name, it cannot be rectified through amendment or assignment. However, if the application was filed by the rightful owner but contains an error in the applicant’s name, such a mistake may be corrected.

Ensuring accurate representation of mark ownership in the application is crucial. Errors or misrepresentations can seriously impact the application’s validity and registration.

The Essential Requirement of Ownership in Trademark Applications

In conclusion, the ownership requirement in trademark application filing is fundamental. An application based on use in commerce must be filed by the mark’s owner on the filing date. Failure to meet this requirement renders the application void. Additionally, the applicant must demonstrate a bona fide intention to use the mark in commerce and accurately represent mark ownership in the application.

Ready to take charge of your trademark application process? Contact Keener Legal today and let our experienced team guide you towards successful brand protection. Schedule a consultation now and ensure your trademark filing is handled with expertise and care!