Understanding who should be listed as the applicant of a trademark application in the USPTO is absolutely critical. Naming the wrong applicant is one of the most common errors made by people who choose to file their own trademark applications. The worst part is that you generally don’t even know you made the error until you try to enforce your trademark registration against an alleged infringer and, in response, the infringer files a trademark cancellation against your registration on the basis that it’s void. That’s one nasty surprise you don’t want. The good news is that this mistake is easily avoidable if you spend some time carefully considering which individual or entity should be named as the applicant.
Who is the Applicant of a Trademark Application?
In short, the applicant depends on the filing basis of the trademark application:
Section 1(a) – Use in Commerce
The applicant of a trademark application filed under Section 1(a) (use in commerce) is the owner of the trademark. The owner of the trademark is the person or entity that (1) controls the use of the trademark, and (2) controls the nature and quality of the products and/or services with which the mark is used. Most often, the applicant is either an individual or a business entity such as a corporation or limited liability company (LLC). However, the applicant of a trademark application could also be a general partnership, limited partnership, limited liability partnership (LLP), professional corporation, municipality, government agency, or any one of the numerous types of foreign business entities that exist outside of the United States (e.g. GmbH, S.r.l., SAS, etc.).
Section 1(b) – Intent to Use
The applicant of a trademark application filed under Section 1(b) (intent to use) is the person or entity that (1) is entitled to use the trademark in commerce, and (2) has a bona fide intention to use the mark in commerce as of the application filing date in connection with the products/services listed in the application. Again, the applicant could be an individual or any one of the entities noted above. When it comes time for the applicant to file the Statement of Use or Amendment to Allege Use, the applicant will need to verify that it’s the owner of the trademark (as if the application was originally filed under Section 1(a)).
Section 44(d) – U.S. Application Based on Foreign Trademark Application
The applicant of a trademark application filed under Section 44(d) (U.S. application based on ownership of a foreign trademark application) must meet the same initial criteria as the applicant of a trademark application filed under Section 1(b). If the foreign trademark application matures into a registration, and the applicant relies on it as a basis for registration under Section 44(e), then the applicant will never have to verify that it’s the owner of the trademark. On the other hand, if the foreign trademark application goes abandoned, then the applicant will eventually need to amend its application to Section 1(a) and verify that it’s the owner of the trademark.
Section 44(e) – U.S. Application Based on Foreign Trademark Registration
Finally, the applicant of a trademark application under Section 44(e) (U.S. application based on ownership of a foreign trademark registration) must satisfy the same initial criteria as the applicant of a trademark application filed under Section 1(b). But, because the foreign registration itself is the basis for registration of the applicant’s mark in the U.S., the applicant never has to amend its application to Section 1(a) or ever verify that it’s the owner of the trademark.
Can There Be More Than One Applicant of a Trademark Application?
Although there’s typically only one trademark applicant listed in a trademark application, it’s possible to name more than one individual or entity as joint applicants. However, I strongly urge you to think carefully about whether there are, in fact, multiple applicants that meet the criteria for the particular filing basis under which you’ll be submitting your trademark application.
What If I Name the Wrong Individual or Entity?
If you list an individual or entity on the USPTO trademark application form that is not actually the applicant (i.e. does not meet the criteria for any of the four filing bases), then the application is considered void and any resulting trademark registration is void and without any legal effect. If you make this unfortunate mistake, it cannot be corrected by preparing and filing a trademark assignment with the USPTO. Instead, you would have to file a brand new trademark application that names the proper applicant.
Questions About Who’s the Applicant?
I’m experienced US trademark attorney Morris Turek. If you’re still a little confused about who should be listed as the applicant in your trademark application, feel free to contact me for a no-charge consultation. You can send an email to firstname.lastname@example.org, call me at (314) 749-4059, or submit the contact form located below. I look forward to speaking with you soon.