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

[Scott Landsbaum]

Isn't this a contract dispute and not a USPTO issue?  Why would the creator
want to cancel the registration and lose the priority vs other third
parties?

Regards,
Scott

Scott Landsbaum, Inc.
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On Wed, Jun 11, 2025 at 4:37 PM Stephen McArthur via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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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