[E-trademarks] Ownership of trademark registration question between a Creator and a Licensee

[Stephen McArthur]

I've got a hypothetical here that I'd love some feedback on.

Creator enters into a contract with a third-party Seller to manufacture and
sell his product bearing a Trademark. The contract clearly sets out that
the Trademark is exclusively licensed to Seller, but not assigned to it.
Creator never sold the product himself, but just had some demo versions
that he showed off at conventions.

Seller then registers the trademark at the USPTO identifying itself as the
owner. Years pass and the trademark is now incontestable. Seller has been
making and selling the very successful Product bearing the Trademark for
years under the license, and writing monthly checks to Creator.

Creator now decides he wants the trademark registration in his name and for
it to be assigned to him. Despite the contract only licensing and not
assigning the trademark, Seller refuses to comply with the assignment since
6 years have passed since the trademark was registered in Seller's name
without Creator ever saying anything.

On what basis, if any, could Creator file a Cancellation for the
incontestable trademark registration?

Could Creator file his own trademark application and when the original
registration is cited against it in an Office Action, produce the license
showing the owner of the senior trademark is their licensee in order to get
around the refusal?

Thanks in advance for any guidance!


*The McArthur Law Firm*Stephen Charles McArthur
8383 Wilshire Blvd., Ste. 800
Beverly Hills, CA 90211
(424) 258-6815
www.smcarthurlaw.com

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