Entries in Trademark Filing Mistakes (1)

How You Sign a USPTO Application can be Crucial

It’s an innocent mistake. 

You sign your company’s application for trademark registration in your individual name, rather than in the name of your company. Innocuous, right? Yet, if your company is the one that uses the trademark, that mistake could be fatal to your application.

The USPTO clarifies: “If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned.” Trademark Manual of Examining Procedure § 803.01, citing 37 C.F.R. § 2.71(d).  

In particular, the USPTO notes that an officer who applies to register his or her organization’s trademark in his or her individual name commits a fatal error in the filing that cannot be corrected:

Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:

(1) President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Id. at § 1201.02(c).

So whether you seek an advantage by keeping the trademark in your personal name, or because you don’t know any better, listing yourself as the owner when the trademark is actually owned by your entity can be dangerous. It can render your application void — as well as any registration that later issues.